Court Of Appeal, August 17, 2026, Order On Permissibility And Appeal Of Conditional Counterclaims For Revocation, UPC-CoA-40/2026, UPC-CoA-123/2026

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The UPC Court of Appeal examines whether conditional counterclaims for patent revocation are permissible under the Unified Patent Court Agreement, and whether such counterclaims constitute separate actions requiring distinct appeals or cross-appeals. The decision addresses the procedural treatment of unfulfilled conditional counterclaims and the circumstances under which courts must rule on their merits.

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Key takeaways

Infringement actions and revocation counterclaims are separate actions under Art. 32(1) UPCA, making a conditional counterclaim an “inter-procedural” condition that determines whether a separate appeal or a cross-appeal must be lodged

Since the infringement action and the counterclaim for revocation are adjudicated in separate proceedings, a condition linking the counterclaim to the outcome of the infringement action qualifies as inter-procedural rather than intra-procedural. As a result, the defendant cannot rely on a cross-appeal under Rule 237 RoP to pursue the counterclaim, but must instead lodge a separate appeal against the first-instance decision.

Conditional counterclaims for revocation are permissible under the UPCA and remain pending even if the condition is unfulfilled, with Rule 263.3 RoP applying by analogy to limit the circumstances under which a decision on the merits of the counterclaim is required

Nothing in the UPCA or Rules of Procedure excludes conditional counterclaims per se. Under the principle of party autonomy, parties are free to define the subject-matter of their case and limit their claims conditionally. Making a counterclaim conditional does not alter the claims themselves but merely restricts the circumstances under which the Court must decide on their merits, and is therefore not a withdrawal. Rule 263.3 RoP applies by analogy, and the counterclaim remains pending during the appeal period.

Under Articles 2 and 6 UPCA, ‘the Court’ encompasses both the Court of First Instance and the Court of Appeal, meaning a conditional counterclaim remains pending during the appeal period

Unless explicitly restricted to the first instance, a condition referring to “the Court” means a final finding of infringement. Thus, if the claimant appeals a non-infringement finding, the defendant’s conditional counterclaim remains pending and can be appealed.

Under Rule 242.2(b) RoP, “failed to decide” covers any issue left undecided at first instance, allowing the Court of Appeal to decide the counterclaim directly

If the Court of Appeal finds infringement, it will decide the undecided validity issues itself rather than referring the case back. Undecided issues due to an unfulfilled condition are treated as issues the first-instance court “failed to decide.”

Division

Court of Appeal

UPC number

UPC-CoA-40/2026, UPC-CoA-123/2026

Type of proceedings

Request for review (Rule 333 RoP) and application for re-establishment of rights (Rule 320 RoP) in parallel infringement and counterclaim for revocation proceedings

Parties

Counter-claimant / Defendant at first instance: AorticLab, srl

Counter-defendant / Claimant at first instance: Emboline Inc.

Patent

EP 2 129 425

Body of legislation / Rules

R. 220.1(a) RoP, R. 237 RoP, R. 242.2(b) RoP, R. 263.3 RoP, Art. 2 UPCA, Art. 6 UPCA, Art. 32(1) UPCA, Art. 75(1) UPCA

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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