Long arms and a more relaxed approach to added subject matter - the UPC at 2 years old

The Unified Patent Court (UPC) has been open for business since June 2023 and since then we have been learning, bit by bit, what it will mean for those who are using it. #

As of the start of June 2025, when the Unified Patent Court turned 2 years old, 883 actions have been initiated before the UPC, with 320 infringement actions and 369 revocation actions, many of which will be counterclaims against infringement, but some of which will be independent revocation actions.

Just 50 independent revocation actions were filed. It is not possible, or indeed correct, to suggest this is success or failure at this stage, but we wanted to look at some lessons which have emerged so far. 

Jurisdiction – how long do the UPC arms stretch? #

The numbers who are taking up the option of UPC protection indicates there is attraction to the multi-jurisdictional protection provided by the court, where it can be used to pursue relief in respect of infringement in multiple UPC states simultaneously, but does the jurisdiction of the UPC go further?

Recently, the UPC has recently delivered a decision, Fujifilm Corporation v Kodak (UPC_CFI_355/2023), which granted an injunction for the infringement of the UK part of a European patent. The UPC has also indicated they have jurisdiction over the validity of UK patents but only as a prerequisite for infringement, i.e. the UPC cannot revoke UK patents.

Additionally, in the case of Alpinestars S.P.A v Dainese SPA, (UPC_CFI_792/2024), the UPC have issued an order reiterating the UPC’s jurisdiction to decide on infringement issues relating to parts of European patents in non-UPC states (e.g. Spain and UK) where the defendant is domiciled in a UPC member state. 

This has caused quite a stir in legal circles and is a bold early step in the early years of the UPC. However, it has now been confirmed by the CJEU in BSH v Electrolux (C-339/22) that the UPC does have international jurisdiction over the UK part of an infringement action and can also implicitly examine validity (as a pre-requisite for determining infringement) if the defendants are domiciled in a contracting member state.

This development potentially carries a lot of meaning for both patent owners and potential infringers alike. Particularly, the UPC provides increased exposure in that it can be used to pursue infringement in the UK (without potentially expensive separate infringement proceedings). Also, whether this will happen remains to be seen, the UPC’s comments regarding validity (in an infringement action) could well be used by the UK court in any separate validity proceedings. This expanded jurisdiction of the UPC should be considered by owners and infringers alike when considering their strategy. 

Added Subject Matter – is the UPC a bit more relaxed? #

The EPO is famously strict on added subject matter, often adopting what is described as a “gold standard” test when considering amendments to an application. This is often encapsulated when amendment is based on the isolation of a feature from a part of the specific description where the EPO can often insist on other specific features being incorporated into the claims.

In Abbott v Sibio (UPC_CoA_382/2024), a more holistic approach to the assessment of added subject matter has been adopted. Specifically, the Court of Appeal has held that the key test was “what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall be considered as part of its content” – this is consistent with the EPO’s approach but places a greater emphasis on implicitly disclosed subject matter, suggesting the UPC is more open to what the skilled person would read into the specification rather than what is explicitly stated.

It is highly unlikely that in the short to medium term, the EPO would start to place a greater emphasis on implicitly disclosed subject matter and will likely remain very strict on the admissibility of amendments. However, it is encouraging that the UPC would consider it when looking at support for claimed subject matter as it means that there is more flexibility concerning what could be read into a specification than just what is explicit from the specification.

Inventive Step – problem solution approach or not? #

In the run up to the start of the UPC, a lot of discussion was around how it would address the key topics of substantive patentability,  i.e novelty, inventive step and the presence of excluded subject matter. The EPO has established the problem-solution approach as a way of assessing inventive step and it remained to be seen whether the UPC would follow suit. 

In Edwards Lifesciences v Meril (UPC_CFI_501/2023), the UPC set out (albeit at first instance and with the possibility of appeal) that “…the problem solution approach developed by the European Office shall primarily be applied as a tool to the extent feasible to enhance legal certainty…” which is an explicit indication that the UPC have a desire to reach consistent conclusions on inventive step with the EPO. This is good news for those of us who draft applications for success in Europe, even if we wait for any news of an appeal.

SUMMARY #

• The assessment of added subject matter at the UPC is more reliant on implicitly disclosed subject matter rather than the EPO’s strict approach.
• The UPC seems to want to provide legal certainty regarding inventive steps by seeking to assess them in a way consistent with the problem-solution approach.
• The UPC is extending its arms into non-UPC states when it comes to deciding infringement, but it does not have jurisdiction to revoke patents in non-UPC states.

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