Rule 20 – Decision or order on a Preliminary objection

1. As soon as practicable after the expiry of the period referred to in Rule 19.5, the judge-rapporteur shall decide the Preliminary objection. The judge-rapporteur shall give the parties an opportunity to be heard. The decision shall include instructions to the parties and to the Registry concerning the next step in the proceedings.

2. Where the Preliminary objection is to be dealt with in the main proceedings, the judge-rapporteur shall inform the parties.

Case law

Court of Appeal

IPPT20260316, UPC CoA, Vivo v Sun Patent
The Court of First Instance has case management discretion to either decide on the Preliminary objection as soon as practicable or decide to deal with the Preliminary objection in the main proceedings (R. 19 RoP, R. 20 RoP, R. 102.1 RoP, R. 331.1 RoP). The decision to deal with the Preliminary objection in the main proceedings may be taken either by the judge-rapporteur, as laid down in R. 20.2 RoP, or by the panel if the judge-rapporteur has decided to refer the matter to the panel to decide. R. 102.1 RoP on the interim procedure shall apply applies mutatis mutandis to the written procedure where the judge-rapporteur, after his assignment to the case by the presiding judge pursuant to R. 18 RoP, is likewise tasked with the management of the case, including case management decisions or orders relating to a Preliminary objection. Limited review in appeal (Article 73 UPCA)  Considering that the CFI has a margin of discretion […] the review by the Court of Appeal is limited. If, within this limited scope of review, it is established that the CFI erred in using its discretion, for example by misusing or exceeding its discretion, the order must be set aside. The LD Paris has not misused or exceeded its margin of discretion in deciding to defer the decision on the admissibility of claim A.II (FRAND) of the SoC to the main proceedings. There are sound reasons of case management efficiency for the admissibility of claim A.II to be dealt with in the main proceedings. Follows from Statement of claim that the claimed determination of a FRAND offer is only incidental or dependant on infringement.

IPPT20240918, UPC CoA, Volkswagen v NST
Postponement of decision on Preliminary objection based on lack of jurisdiction for the claim for damages suffered in the UK and Northern Ireland  within the boundaries of the discretion of the Munich LD and not unreasonable (R.19.5 RoP, R. 20.2 RoP). 

IPPT20240321, UPC CoA, Netgear v Huawei
Determination of the judge-rapporteur to deal with the Preliminary objection in the main proceedings is a case management decision that must be reviewed by the panel at the request of the defendant (Rule 333(1) RoP). As a general principle, unless provided otherwise, a case management decision or order made by the judge-rapporteur or the presiding judge can only be appealed if such decision or order has first been reviewed by the panel pursuant to R.333.1 RoP. Judge-rapporteur not authorized to decide on application for review under Rule 333(1) RoP. Rule 333(4) RoP explicitly provides that the panel shall decide the Application for review. As can be inferred from Article 52(2) UPCA, case management during the written procedure and the interim procedure is mandated by the panel to the judge-rapporteur. In accordance therewith, Rule 331(1) RoP provides that case management is the responsibility of the judge-rapporteur subject to Rule 102 and Rule 333 RoP. If a Preliminary objection is rejected, as an exception to the general principle, leave to appeal may be given by the judge-rapporteur without prior panel review under Rule 333(1) RoP being required (Rule 21(1) RoP). If leave is granted, the unsuccessful party thus has the choice to either file an appeal or an application for review under R.333.1 RoP. If the judge-rapporteur did not grant leave to appeal, a party may apply for a panel review. The resulting panel decision may then subsequently be appealed if leave has been granted by the panel under R.220.2 RoP, or it may be subject to discretionary review under R.220.3 RoP. An Application under Rule 333(1) RoP in the event of a Rule 20(2) RoP notification is not inadmissible due to a lack of a justified interest. 

IPPT20240111, UPC CoA, Netgear v Huawei

Request for discretionary review and appeal allowed of decision of the judge-rapporteur not to allow review of order by the panel that a preliminary objection is to be dealt within the main proceedings (Rule 220(3) RoP). As a general principle, unless provided otherwise, a case management decision or order made by the judge-rapporteur or the presiding judge can only be appealed if such decision or order has first been reviewed by the panel pursuant to Rule 333.1. Request for a discretionary review allowed of decision of judge-rapporteur on the admissibility of the application to have his decision reviewed by the panel pursuant to Rule 333.1 RoP, rather than have the panel decide on the admissibility of the application. Denying the request only justified if the underlying reasoning of the judge-rapporteur would be accurate. Under these circumstances, the standing judge considers it justified to allow the request for discretionary review to the extent that the applicant is allowed to appeal the decision of 11 December 2023.

Court of First Instance

IPPT20251127, UPC CFI, LD Paris, Keeex v Adobe
Preliminary objections dismissed (R. 20 RoP). Request to set aside a Statement of findings (procès-verbal de constat) and subsequent expert report not granted (R. 334(g) RoP). Reference to French national law to challenge the probative value not relevant as the UPC is governed by specific rules of evidence (Article 53 UPCA, R. 170 RoP - R. 189 RoP). Statement of Claim alleges that website is accessible within French territory (Article 7(2) BR) it is not necessary to demonstrate that the website in question is specifically aimed at the French public; the sole criterion that the website is accessible within French territory is sufficient to establish an infringement of a digital product or digital service offered online. Jurisdiction of UPC under Article 7 BR also extents to third country territories (namely Switzerland, Spain, the United Kingdom, Ireland, Norway and Poland), based on the BSH decision: applies regardless of whether the basis for jurisdiction is established under Article 4 of the Brussels Ia Regulation (domicile of one of the defendants) or on Article 7(2) of the Brussels Regulation (place where the harmful event occurred), contrary to what is claimed by the defendants.

IPPT20250901, UPC CD Paris, Seoul Viosys v Emporia
Preliminary objection rejected in revocation action, claiming lack of jurisdiction because claimant in this revocation action is a straw company and effectively the same party as in previous proceedings regarding the same patent before the LD Düsseldorf (R. 19 RoP, R. 20 RoP, Article 33(4) UPCA). Insufficient evidence that the claimant for invalidity is a straw company. The fact that the two companies resorted to substantially overlapping defence strategies, including having the same exhibits, does not mean that they are not conducting autonomous business activities or pursuing their own interests, even if, in this case, those interests converge in challenging the patent claimed by the applicant. The UPC framework does not exclude that a patent may be attacked by different subjects, even if linked by organizational ties or commercial relationships, and by the means of different claims, even if structured in the same grounds of invalidity.

IPPT20250818, UPC CFI, LD The Hague, Genevant v Moderna
Panel review confirming of PO order 23 May 2025 (R. 333 RoP, R. 20 RoP). Jurisdiction over Moderna Spain based on both Art. 7(2) and Art. 8(1) BR in the PO Order and for Norway on the corresponding articles of the revised Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial. For establishing international jurisdiction, it is sufficient for the Claimants to allege in a substantiated way either that Moderna Spain and Moderna Norway infringe the same patents (one of which is a bundle patent, the other has unitary effect) with the allegedly infringing product “Spikevax” (the same product) in their home countries  (the same territory) collectively  with Moderna Netherlands within the meaning of art. 8 BR / 6(1) Lugano Convention), or alternatively that these entities (threaten to) infringe the same patent with unitary effect or (national leg of) a European patent with the same product in UPC territory (Art. 7(2)BR/5(3) Lugano Convention). It is then for the court to determine whether the alleged infringement is plausible to establish jurisdiction.

IPPT20250727, UPC CFI, CD Paris, Seoul Viosys v Laser Components
Non recoverable costs of legal expert (€ 6,720) on interpretation of Article 33(4) UPCA. The team of representatives would have been able to consider the issues raised by the revocation action, and in particular, the issue of the interpretation of Article 33 UPCA, and on that basis prepare adequately and appropriately file their submissions. 

IPPT20250620, UPC CFI, LD Munich, Headwater v Motorola
Preliminary objections rejected (R. 19 RoP, R. 20 RoP). Objections of defendants 1) and 2) were lodged one day after the expiry of the one month objection period (R. 300(c) RoP). Deemed day of service of Rule 271.6(b) RoP does only apply to service of a Statement of claim in a Contracting State but not in the USA. The actual date of service must be taken into account, for which the CMS is not decisive, but rather the certificate of service or other proof of service. Objections of defendants 1) to 3) rejected. Competence over multiple defendants having a commercial relationship and the same alleged infringement, even though the contributions of each defendant is not identical (Article 33(1)(b) UPCA). Objections of defendant 5) rejected (Article 33(1)(b) UPCA). The existence of a business relationship as such with companies belonging to the Motorola Group is not disputed, nor the existence of a commercial activity with the same purpose, namely the promotion of manufacturing through production management agreements. An indirect business relationship with other companies in the Motorola Group to which the third defendant also belongs and with which it maintains business relationships, is sufficient. Also competence on the basis of Article 33(1)(a) UPCA, although not stated in the Statement of claim. Plaintiff's reference thereto in its response to the opposition must be taken into account. (R. 13 RoP, R. 263 RoP). Even if the plaintiff had not invoked Article 33(1)(a) UPCA in the dispute, the court would have been free  to base the jurisdiction of the Local Chamber on this provision. Fifth defendant is also allegedly an intermediary by enabling and promoting the infringing acts of the other defendants as a logistics service provider (Article 63(1) UPCA).

IPPT20250612, UPC CFI, LD The Hague, Genevant v Moderna
Claimants are given to opportunity to respond within one week to  ‘application to review a case management order’ (R. 333 RoP), requesting to have the order of the JR of 23 May 2025 (ORD 21852/2025) regarding preliminary objections [R. 20 RoP] filed by Defendants, reviewed by the entire panel (Rule 333.1 RoP).

IPPT20250604, UPC CFI, LD The Hague, Genevant v Moderna
Rectification of date of service in PO Order and assumed late filing of Preliminary objections (R. 353 RoP,,R. 19 RoP).. The applications are founded. The dates of service mentioned for Moderna Germany, Belgium and Poland in the PO Order are incorrect and constitute clerical mistakes, errors in calculation and/or obvious slips in the order which can be rectified pursuant to R.353 RoP.

IPPT20250527, UPC CFI, LD Hamburg, Dolby v Epson
Preliminary objection unfounded (R. 19 RoP, R. 20 RoP): Effective withdrawal of opt-out for all countries (R. 5 RoP). The relevant patent is clearly identified and the states are only mentioned in connection with the ownership. In this respect, it cannot be inferred from the withdrawal that it should only refer to the countries named there. Pursuant to R. 5.7 RoP a withdrawal of an opt-out cannot distinguish between countries.

IPPT20250404, UPC CFI, LD Mannheim, Fingon v Samsung
Material ownership of the patent-in-suit is to be dealt with in the main proceedings (R. 20.2 RoP). 

IPPT20250403, UPC CFI, LD Mannheim, Corning v Hisense
Preliminary objection rejected (R. 20 RoP). Claimant submitted in its Statement of claim sufficient facts, which establish competence of the Local Division Mannheim for each and every defendant under Art. 33(1)(a)UPCA, which is reinforced by R. 303.1 RoP. Whether or not those allegations are true or not and if in fact all glass sheets stem from the same process and are identical or not is subject to the main proceedings (cf. UPC_CoA_188/2024 Order of 3 September 2024 para.18). 

IPPT20250321, UPC CFI, LD Paris, IMC V Mul-T-Lock
Preliminary objection to UPC jurisdiction regarding Spanish, Swiss and UK designations of European patent rejected (Article 4  and article 24  Brussels Ibis regulation. Article 31 UPCA, R 20 RoP). The UPC therefore has jurisdiction to hear the infringement action brought by IMC Créations in respect of the Spanish and Swiss parts, if necessary, by staying the proceedings pending the decision of the national court hearing the action for invalidity, if there was a significant risk that the patent would be invalidated by the court of the State in which the patent was granted. The UPC also has jurisdiction to hear the infringement action brought regarding the British part of the patent and, where appropriate, to rule on the validity of the title, provided that the decision on the plea of invalidity of the patent has only inter partes effect.

IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Cross border jurisdiction UPC over defendant domiciled in UPC Contracting Member State regarding infringement of UK part of a European patent (R. 20 RoP, Article 4 Brussels Regulation, Article 24 Brussels Regulation). This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case. 

IPPT20240508, UPC CFI, LD Munich, Volkswagen et al. v NST
Sound reasons of case management efficiency for preliminary objections of lack of jurisdiction raised by the Defendants to be deferred to a later stage of the proceeding (Rule 20.2 RoP, Article 41.3 UPCA). The exceptions are related to the claim for damages for Defendants’ activities in the territory of the United Kingdom or, more broadly and generally, to the entire claims for damages moved against TI. 

IPPT20231211, UPC CFI, LD Munich, Huawei v Netgear

Notification by the judge-rapporteur (Rule 20(2) RoP)  that a Preliminary objection is to be dealt with in the main proceedings is not subject to review by the panel (Rule 333(1)) RoP). The judge-rapporteur decides on this inadmissible application because of the objective of procedural economy, in particular the conservation of the time resources of the other members of the panel.

IPPT20231113, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences

Preliminary objection concerning the competence of the Central Division because of a pending action before the Munich Local Division rejected: Meril Italia is not the same party a Meril India or Meril Germany (article 33(4)UPCA, Rule 20 RoP). Preliminary requests to postpone the hearing on Preliminary objection and to exclude exhibits rejected (Rule 20 RoP). One exhibit is not a new document but a more complete version concerning an irrelevant fact for the present case. Other exhibits concern three judicial decisions issued by national judges, which cannot be deemed as introducing (new) ‘facts’ – whose fling, as previously said, is, in principle, not admissible after the lodging of the Preliminary objection – since they do not relate to historical facts, but to arguments used to support an opinion. 

IPPT20231004, UPC CFI, CD Munich, Nanostring v Harvard

Objections based on articles 29 and 30 Brussels Ibis Regulation may be the subject of a Preliminary objection under Rule 48 in connection with 19.1(a) RoP. Preliminary objection is to be dealt with in the main proceedings for reasons of procedural economy and efficiency (Rule 20.2 RoP). The Court in its Preliminary Order also expressed its understanding that the Preliminary objection relates to the Court´s jurisdiction only in respect of the German part of the European Patent. In view of the limited scope of the objection raised by the Defendant and in view of the different auxiliary requests submitted by the Claimant in response, the parties seem to agree that the UPC at least has jurisdiction for the non-German parts of the patent and that proceedings should continue in any event in relation to these parts. This understanding has been confirmed by the parties in their submissions following the Preliminary Order.

IPPT20230828, UPC CFI, LD Helsinki, AIM Sport Vision v Supponor
Procedural order in main proceedings and provisional measures proceedings concerning issues to be addressed in written submissions, invitation to an oral hearing in front of the whole panel, including a technically qualified judge, and instructions regarding oral hearing.