Court of Appeal to rule on major points even if missing from first instance decision (UPC_CoA_302/2025, UPC_CoA_305/2025)
UPC Case Law | 28.05.2026
Court docket: Court of Appeal, Decision of 17.02.2026
UPC_CoA_302/2025, UPC_CoA_305/2025 [EP 2 548 648]
Parties: Rematec v. Europe Forestry
Contributor: Rifat Camurdan
Headnote
1. A decision on whether the subject-matter of a dependent patent claim is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, Art. 138 (1)(b) EPC, is not required for lack of legal interest on the part of the revocation (counter)claimant if the (counter)claim for revocation is already unsuccessful with respect to the independent patent claim to which the dependent patent claim directly or indirectly refers back and which therefore has a scope of protection that also encompasses the dependent patent claim.
2. Pursuant to Art. 75(1) UPCA, where the Court of Appeal sets aside a decision of the Court of First Instance, it shall, as a rule, give a final decision itself. This means that the Court of Appeal, after considering the appeal of the Claimant (and revocation defendant) against the judgment of the Court of First instance in the counterclaim for revocation to be well-founded, must, in order to issue a final decision, as a rule decide not only on the counterclaim for revocation but also render a final decision on the infringement action.
3. A referral back to the Court of First instance is contemplated, as follows from Article 75(2) UPCA, only in exceptional cases and in accordance with the Rules of Procedure. Accordingly, Rule 242.2(b) RoP provides that the fact that the Court of First Instance failed to decide an issue which it is necessary for the Court of Appeal to decide on appeal does not normally constitute an exceptional circumstance justifying a referral back. Consequently, the fact that the Court of First Instance did not have to rule on the infringement of the patent at issue because, in the context of a counterclaim for revocation brought by the Defendant, it considered the patent underlying the infringement action to be invalid and therefore revoked it does not, as a rule, give the Court of Appeal grounds to refer the counterclaim for revocation and the infringement action — or even only the infringement action — back to the Court of First Instance.
4. In addition to finding a patent infringement, an order pursuant to Art. 80 UPCA also requires the finding of a legitimate interest of the claimant in the requested publication of the decision at the defendant's expense. In this regard, all circumstances of the individual case must be considered, such as the scope and severity of the infringement, the public presentation of the conflict, the public's interest in information, and whether the publication of the decision can contribute to eliminating misconceptions in the market caused by the infringement or to deterring future infringements.
Relevance of the decision
In this Decision, the Court of Appeal overturns the First Instance Decision (LD Mannheim, UPC_CFI_340/2023) that the patent is invalid, and instead finds the patent both valid and infringed.
Although the First Instance Decision dealt only with the revocation counterclaim, the Court of Appeal rules that the appeal decision must give a final decision on the infringement claim as well, and referral back to First instance can be ruled out in accordance with Rule 242(2)(b) RoP.
This confirms a contrast with the EPO’s Boards of Appeal practice on remittal: Article 11 of the Rules of Procedure of the Boards of Appeal (see RPBA) requires that “fundamental deficiencies which are apparent in the proceedings before that [first instance] department constitute such special reasons [for remittal]”. In an early statistical review of the remittal following the introduction of the new RPBA (see Article, beginning on p.2), the presence of “open issues regarding material aspects” due to the lack of discussion in the first instance decision on aspects such as inventive step or novelty were deemed to be reasons for a remittal.
The Court of Appeal considered there was no legal interest in deciding on the sufficiency of dependent claims when the independent claim was found valid. Contrasting this to the EPO’s decision T878/23 (reported here) would however be improper as in the present case, the scope of the dependent claims fell entirely within the scope of the independent claim.
The Patent Proprietor also requested the Infringer to bear the costs of publication of the decision in print media. The Court of Appeal rejected this request due to the lack of legitimate interest in the publication of the decision, taking into account “the scope and severity of the infringement, the public presentation of the conflict, the public's interest in information, and whether the publication of the decision can contribute to eliminating misconceptions in the market caused by the infringement or to deterring future infringements.” This unsuccessful request caused, in part, the Patent Proprietor to become responsible for some of the costs of the infringer, as the Proprietor did not entirely succeed with all of its requests and thus must bear some portion of the costs.