UPC CoA, 30 March 2026: A lot of what you may want to know on jurisdiction, skilled persons and provisional measures
14-05-2026 Print this page
Jurisdiction (Article 31 UPCA). By not contesting the jurisdiction and competence of the Court in First Instance, the Appellant (Defendant in first instance) has in principle foregone this opportunity on appeal and cannot raise the alleged lack of jurisdiction and competence as a ground for overturning the impugned order (Article 26(1) Brussels I Recast and R. 19.7 RoP). […] by manufacturing, preparing and selling its GlucoMen iCan products intended for the European market, the likelihood of damage arose from the possibility of third parties obtaining these products in the Contracting Member States, including in the Netherlands. This provides basis for accepting jurisdiction pursuant to Art. 71(b)(2) and Art. 7(2) BR.
Review first instance procedural errors in appeal (Article 73 UPCA). The Appellants have not shown that any of the alleged procedural errors resulted in an incorrect decision by the LD. This is for the Appellants to demonstrate and already for this reason, the alleged procedural errors cannot result in setting aside the Order.
Definition of skilled person is a question of law (Article 56 EPC). The definition of a skilled person is a question of law, not a statement of fact.
Claim construction (Article 69 EPC. R. 171.2 RoP). Claim construction is a matter of law, not a matter of fact […]. R. 171.2 RoP is therefore not applicable here. In general, a claim is not limited to the embodiments described in the patent. Embodiments are included in the patent description to explain and clarify the claimed invention, not to limit the claim to the specifics of the described embodiment.
New submission in appeal on added matter refused (R. 222.2 RoP, Article 138(1)(c) EPC). When exercising its discretion, the Court of Appeal can take into account the justification by the party bringing forward the new submission and the relevance of the new submission for the decision in appeal. Although the Appellants were not aware of the reasoning of the LD when preparing their Objection in first instance, they were aware of Respondent’s position that claim 1 also covers a seal that encloses only one side of the contacts portion. The LD has generally accepted this view and merely refers to claims 4 and 5 as a confirmation of this interpretation.
Sufficient disclosure (Article 138(1)(b) EPC). The test to be applied is whether the skilled person is able to reproduce the claimed subject matter on the basis of the patent without any inventive effort and without undue burden. An invention is sufficiently disclosed if the patent specification shows the skilled person at least one way – and in case of functional features: one technical concept – of performing the claimed invention.
Inventive step – no incentive and no pointer (Article 56 EPC). The skilled person had no incentive to adapt the sensor system of US833 and had no pointer to adjust this system to obtain the patented sensor system with the advantages described in the patent at issue.
Provisional measures – no unreasonable delay (R. 211 RoP, R. 206.2(d) RoP). Unreasonable delay: the time limit within the meaning of R. 211.4 RoP is to be calculated from the date on which the applicant became aware, or should have become aware, of the infringement that would enable him, in accordance with R. 206.2 RoP, to file an application for provisional measures with a reasonable prospect of success. Thus, the decisive point in time is when the applicant has, or should have had, after exercising due diligence, the necessary facts and evidence to establish infringement within the meaning of R. 206.2(d) RoP. The patent was granted on 4 June 2025 and obtained unitary effect on 18 June 2025. The Application was filed one month after the grant of the patent and about two weeks after obtaining unitary effect. This in and of itself already shows that the Respondent acted swiftly after obtaining (unitary) patent protection.
Why provisional measures are necessary (R. 206.2(c) RoP). Provisional measures will be necessary, for instance, where any delay would cause irreparable harm to the patent holder. Irreparable harm is, however, not a necessary condition for the ordering of provisional measures. The necessity of provisional measures may also follow from the fact that there is direct competition between the attacked embodiment and the product of the patent holder. In those cases, granting provisional measures may be justified if they are necessary in order to maintain the status quo that existed immediately prior to the alleged infringement until the decision of the Court on the merits. The necessity for provisional measures may arise in a move from a market situation where only one product is available to one where there are two such competing products. Such a move can be expected to lead not just to price pressure but to a permanent price erosion.
Generally worded injunction (Article 62(1) UPCA, R. 211.1(a) RoP). Absent specific circumstances, in case infringement is held to exist with respect to a particular embodiment, a generally worded injunction may be issued. This is generally justified and has the benefit that if, for example, the infringing product is slightly changed or similar products would be introduced on the market under a different name, these products are covered by the issued injunction. With the clarification by the Respondent that the Sinocare iCan i3 is not covered by the preliminary injunction, there is no enforcement or other risk that would justify deviating from the general approach to issue a generally worded injunction in case of patent infringement.
