Rule 222 – Subject-matter of the proceedings before the Court of Appeal

1. Requests, facts, evidence and arguments submitted by the parties under Rules 221, 225, 226, 236 and 238 shall, subject to paragraph 2, constitute the subject-matter of the proceedings before the Court of Appeal. The Court of Appeal shall consult the file of the proceedings before the Court of First Instance.

2. Requests, facts and evidence which have not been submitted by a party during proceedings before the Court of First Instance may be disregarded by the Court of Appeal. When exercising discretion, the Court shall in particular take into account:

(a) whether a party seeking to lodge new submissions is able to justify that the new submissions could not reasonably have been made during proceedings before the Court of First Instance;

(b) the relevance of the new submissions for the decision on the appeal;
(c) the position of the other party regarding the lodging of the new submissions.

Relation with Agreement: Article 73(4)

Case Law

Court of Appeal

IPPT20260421, UPC CoA, Merz v Viatris
Admission of new evidence in appeal (R. 222.2 RoP). New evidence admitted to challenge factual assumptions made by the CFI. Public legal materials admitted despite belatedness: the Court of Appeal exercises its discretion here and admits exhibits 226-228 in the proceedings. These exhibits are relevant and the Court of Appeal would have been unhindered to inform itself of these orders.Exhibints 229, 230 and 231 (e-mail correspondence between Viatris Santé and CEPS) are disregarded due to belatedness and lack of relevance. I

IPPT20260330, UPC CoA, Sinocare v Abbott
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. 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. 

IPPT20260327, UPC CoA, Onward v Niche
Admissibility of auxiliary requests in provisional measures proceedings (R. 30 RoP, R. 222 RoP). Asserting a patent in an amended (non-granted) form is not automatically inadmissible and depends on the circumstances of the case. Whether such amended claims are suitable is assessed in light of the expedited and limited nature of preliminary injunction proceedings. Parties may file auxiliary requests, but their admissibility depends on procedural rules and timing. The admission of new (auxiliary) requests in appeal proceedings is subject to the court’s discretion under R. 222 RoP. 

IPPT20260316, UPC CoA, Ecovacs v Roborock
Subject matter of appeal (R. 222.1 RoP). As regards submissions in other proceedings, such as proceedings on the merits, the Court is under no obligation to consult other casefiles.

IPPT20260227, UPC CoA, Sibio v Abbott
Request rejected for further exchange of written submissions, following reference in Statement of response to auxiliary requests already submitted in the first instance (R. 36 RoP, R. 222 RoP). The Auxiliary Requests must be considered to be part of the appeal proceedings, until and unless indicated otherwise (e.g. by a withdrawal). In a situation where the CFI did not need to decide on Auxiliary Requests, Appellant still has to address them if it wants to add anything to what was already submitted at first instance. Not allowing further pleadings is not contrary to the principles of due process, in particular the principles of fairness, equity and the right to be heard

IPPT20260204, UPC CoA, Centripetal Limited v Palo Alto Networks
Request to maintain the Saisie Order to the extent outlined in Exhibit A1 is inadmissible  (R. 192 RoP, R. 222.2 RoP). The form in which Centripetal seeks to have the Saisie Order “maintained” […] broadens the scope of the order. The Saisie Order concerned the preservation of evidence at an office located at Rosenheimer Straße 143c in Munich. In the amended form, however, the scope of the order includes documents that are not available at the location of this office. Centripetal seeks the production of documents irrespective of their location. In addition, the detailed descriptions that Palo Alto would be required to provide under requests 1 a) aa) and bb) of the amended request cover a broader – or at least a less clearly defined – category of documents than the technical documentation, internal development records and manuals referred to in the original application. Appellant failed to provide any justification for not submitting the amended request during the first instance proceedings. 

IPPT20250814, UPC CoA, Barco v Yealink
Application for leave to change the claim rejected (R. 263 RoP). An application must explain why such change was not included in the original pleading. Leave shall not be granted if, all circumstances considered, the party seeking the amendment cannot satisfy the Court that (a) the amendment in question could not have been made with reasonable diligence at an earlier stage; and (b) the amendment will not unreasonably hinder the other party in the conduct of its action. Leave to limit a claim in an action unconditionally shall always be granted. Request for exchange of further written pleadings rejected (R. 36 RoP, R. 222 RoP). Parties are entitled to make references to what was said at the oral hearing, subject of course to the duty to not misrepresent cases or facts. If the opposing party experiences a need to nuance or correct statements it made at the oral hearing, it can do so in the Statement of grounds of appeal.

IPPT20250304, UPC CoA, Sumi Agro v Syngenta
Territorial scope – accession of Romania (Article  34 UPCA, R. 222 RoP). When a UPC Signatory State ratifies and accedes, the application of Art. 34 UPCA should be automatic and not subject to limitations, from the day of accession. In view of the general rule in Article 34 of the UPCA, the Court exercises its discretion to allow the application with regard to Romania in the appeal proceeding. 

IPPT20250224, UPC CoA, Biolitec v Light Guide
Late filed price erosion argument and auxiliary request covering alleged infringed acts at 2025 trade fair (R. 222.2 RoP). Biolitec has not justified why the argument on price erosion could not reasonably have been raised during the proceedings before the Court of First Instance.

IPPT20250212, UPC CoA, Meril v SWAT Medical
Duty to be represented (Article 48 UPCA, R. 8 RoP). Late filed objection. Meril GmbH did not make this objection before the Central Division or in its Statement of appeal and grounds of appeal. The Court of Appeal disregards this submission. (R. 226 RoP and R. 222.2 RoP). Representation is a point of admissibility involving public policy considerations (due process) which the Court may examine at any time, also of its own motion. When a matter such as this is raised by the Court, there can be reason, depending on the circumstances, to provide the party with an opportunity to appoint a representative. 

IPPT20241219, UPC CoA, Sumi Agro v Syngenta
Additional pages from publication already submitted in first instance proceedings disregarded (R. 222.2 RoP). Sumi Agro has not justified that Exhibit SA17 could not reasonably have been made during those proceedings. The Court of Appeal decides to disregard the content of Exhibit SA17. Evidence relating to new version of contested embodiment will be regarded. Use of a different ingredient for a composition product marketed under one brand and under one set of marketing authorisations, cannot reasonably have been visible to Syngenta. Sample was bought within one month after Sumi Agro’s submission and subsequent analysis was ready after the order in the first instance 
 

IPPT20241121, UPC CoA, Meril v Edwards
Court of First Instance erred in refusing to grant the requested stay solely on the basis of its finding that a final decision in the opposition proceedings could not be expected rapidly (Art. 33(10) UPCA, R. 295(a) RoP). New legal arguments may be submitted in appeal. The discretion of the Court of Appeal to disregard new “requests, facts and evidence”  does not apply to legal arguments (R. 222.2 RoP). Stays on the ground of parallel EPO opposition proceedings are governed by the more specific provisions of Art. 33(10) UPCA, R. 295(a), R. 295(g) and 118.2(b) RoP. This case therefore does not qualify as an “other case” within the meaning of R. 295(m) RoP. Discretion to stay infringement proceedings in case of parallel EPO opposition proceedings (Art. 33(10) UPCA, R. 295(a) RoP). Only required that it can be expected that a decision of the EPO may be expected rapidly, not a final decision. The Court has a discretionary power to stay, depending on the balance of interests of the parties and the specific circumstances of the case, such as the stage of the opposition proceedings, the stage of the infringement proceedings and the likelihood that the patent will be revoked in the opposition proceedings. 

IPPT20241101, UPC CoA, Scandit v Hand Held Products
Application to file a reply to the Statement of  response rejected (R. 36 RoP, R. 222.2(a) RoP). The fact that Hand Held Products defended the court's interpretation in the response to the appeal with reference to paragraph [0063] does not justify allowing the filing of a reply. Scandit has not substantiated why Hand Held Products' reference to this one paragraph of the patent description requires a new indepth discussion and is not merely a selective aspect of the overall interpretation of features 1.7 to 1.9 of patent claim 1. Scandit will have the opportunity to address this aspect at the oral hearing. Nor can Scandit be allowed to submit further prior art on appeal. In particular, it has not justified that the further prior art which it wishes to submit for the first time in the appeal proceedings could not reasonably have been submitted in the proceedings before the Court of First Instance, as provided for in R. 222.2(a) RoP.

IPPT20241021, UPC CoA, SharkNinja v Dyson
New submission disregarded; lack of relevance for the decision on the appeal (R. 222(2) RoP). Contrary to SharkNinja's view, submissions by the parties in other proceedings that contradict the submissions in the present proceedings do not mean that the submissions in the present proceedings must be regarded as contradictory and irrelevant. The submissions relate, incidentally, to a different patent, albeit with identical claim wording.

IPPT20241009, UPC CoA, SharkNinja v Dyson
New evidence FBD 27 and FBD 28 disregarded in appeal (R. 222.2 RoP). Relevancy of submission not convincingly argued and submitted over three and one month, respectively, after having been obtained

IPPT20240918, UPC CoA, Volkswagen v NST

NST’s new submissions in appeal in its Statement of response not disregarded (R. 222.2 RoP). If Volkswagens clarification in its Statement of appeal and grounds of appeal that Volkswagen clarified is to be taken into account the principles of fair trial require that NST must also be allowed to respond to that on appeal. 

IPPT20240925, UPC CoA, Mammut v Ortovox

Scope of appeal and proceedings (Article 73(4) UPCA, R. 222.1 RoP). The Court of Appeal decides at its discretion, taking into account all the circumstances, whether a submission that was rightly not admitted by the Court of First Instance is to be considered in the appeal proceedings. The subject matter of the appeal proceedings in proceedings for the review of interim measures is in principle limited to the submissions made in the proceedings for the grant of interim measures. In order to ensure legal certainty and the proper administration of justice, the statement of grounds of appeal must be sufficiently clear and specific to enable the respondent to prepare a defence of the judgment at first instance and to enable the court hearing the appeal to decide the appeal. The court may not take into account in its decision written submissions that are submitted only after the conclusion of the oral proceedings on which the decision is based. (R. 195 RoP). 

IPPT20240916, UPC CoA, ICPillar v ARM
Court may of its own motion disregard late filed requests, facts and evidence even if these were not objected to by the other party (Article 73(4) UPCA, R. 222.2 RoP). 

IPPT20240826, UPC CoA, Ballinno v Kinexon Sports
Adequate security for legal costs and other expenses equally available in appeal (Article 69(4) UPCA, Rule 158(1) RoP, Rule 222(2) RoP). Ballinno ordered to provide security for legal costs in appeal in the (total) amount of € 25.000.  The provision of security for costs does not hamper access to justice. (Article 47 EU Charter)