Rematec GmbH & Co KG v. Europe Forestry B.V., UPC Court of Appeal, 17 February 2026, Case nos UPC_CoA_302/2025; UPC_CoA_305/2025
Court of Appeal decides on infringement itself after overturning LD Mannheim’s Decision on validity. No referral back to CFI.
“[T]he 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”
Full Headnote
– 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.
-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.
-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.
-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.
The Decision can be read here.
