UPC Weekly brings you timely, thoughtful and joined-up insight into the evolving landscape of patent litigation at the Unified Patent Court.
2026 Week 31
The UPC is succeeding, no doubt about that. One of the surprises, though, is how one-sided that success has been. Many Local Divisions have cases pouring in, to the extent that the number of judges and panels in those divisions has been increased. But the number of actions at the Central Divisions remains comparatively low. What’s going on?
In the design of the UPC system there is a choice placed on the parties and on the courts – infringement and revocation of patents can be dealt with together or separately. The majority of cases started are infringement actions (at Local/Regional Divisions), and in most of those cases there is naturally a counterclaim for revocation filed as a defensive manoeuvre in response. What we see in practice is that nearly always the court decides not to bifurcate the case, i.e. decides not to refer the counterclaim for revocation to the Central Division. Where bifurcation does happen, it is effectively forced on the Local Division by external factors, such as there already being a standalone revocation action at the Central Division (see UPC Weekly 2024 w28). The UPC was designed in the expectation that many counterclaims for revocation would be referred to the Central Division, and that simply has not happened because naturally the Local Divisions prefer to keep both limbs of the case together.
This availability of bifurcation, even if it is not being used much, means that the UPC treats a counterclaim for revocation as a separate action. That makes is easier to move it between divisions. You can see that a typical merits decision of the UPC has two case numbers assigned to it – one for the infringement action and one for the counterclaim.
In the dispute between Emboline and AorticLab we have the unusual situation where the UPC Court of Appeal (CoA) has now stepped in twice to clarify tricky procedural issues that arise from the separate identity of a counterclaim for revocation compared to the main infringement action.
Security for costs – against whom?
In the order Emboline v. AorticLab (LD Munich 16 April 2025), the Munich LD decided that it was possible for a claimant to obtain security for costs against a defendant. This was based on a reading of the Rules of Procedure (R.158 RoP) that suggested either party can obtain security for costs, and also on the fact that in a counterclaim for revocation the patentee is technically the defendant. But this was swiftly countermanded by the CoA. In AorticLab v. Emboline (CoA 20 June 2025), the CoA clarified that the corresponding part of the UPC Agreement (Art. 69(4) UPCA) says that it is the defendant who may request security for costs from the “applicant”. The CoA’s view was that a counterclaim for revocation is intrinsically linked to the infringement action – it is part of the defendant’s defence. Given that they did not start the action, it would not be right to force the defendant to provide security for costs in order to mount a complete defence.
Can you make a counterclaim conditional?
In UPC Weekly 2026 w3, we reviewed the dispute between the parties in relation to infringement of EP 2129425 B1. We won’t repeat the technical details here (but they are interesting). In Emboline v. AorticLab (LD Munich 13 January 2026), the Munich LD decided that the patent was not infringed. At the oral hearing, the defendant had changed their position to request that the counterclaim for revocation that they had filed (and argued in favour of at the oral hearing) should only be invoked if the court decided that the patent was infringed. In other words, the counterclaim for revocation was made conditional on the outcome of the infringement action.
The Munich LD decided that having a conditional counterclaim was fine, and that changing the case to make an existing counterclaim conditional was also fine. One particularly interesting point was that AorticLab were ordered to pay the costs of Emboline in relation to defending against the counterclaim.
Step up, once more, the Court of Appeal. Emboline (the patentee) have appealed against the LD finding of non-infringement. In their order Emboline v. AorticLab (CoA 16 July 2026), the CoA explained their view of the position of AorticLab (the alleged infringer), who succeeded at first instance.
The CoA said that they agreed with the approach of the Munich LD in allowing the conditionality of the counterclaim. But, looking ahead, what will the CoA do with the appeal against the infringement decision? In particular, what will the CoA do if they decide that the first instance decision was wrong on infringement? Well, in that case the CoA would decide that there is infringement and therefore they will then turn to the counterclaim for revocation. The “condition” for invoking the counterclaim would be satisfied. Furthermore, the CoA would not remit the counterclaim back to first instance.
We have seen this reluctance to remit before. In Rematec v. Europe Forestry (CoA 17 February 2026), at first instance the patent was deemed invalid and therefore infringement was not decided. On appeal, the CoA decided that the patent was in fact valid. And they then decided the issue of infringement without sending the case back to first instance. We explained more in UPC Weekly 2026 w9.
What’s the appeal procedure?
The CoA went on to explain what AorticLab should do in these circumstances. Emboline has filed an appeal, and the oral hearing has already been set for December 2026. At the time of the order, AorticLab had not filed an appeal and the deadline for doing so had passed. The CoA set out a novel procedure that is not specified in the Rules of Procedure but which is pragmatic. AorticLab are allowed to file a conditional appeal, the appeal being against the decision of the LD not to consider the counterclaim. The condition attached to their appeal would be that Emboline file an appeal. In this case, that condition is already satisfied, but the CoA is looking ahead to other cases.
So, the idea is that both parties would be able to file an appeal, working to the same appeal deadline. One party will have “lost” at first instance and so can file a normal appeal. The other party, having made its counterclaim conditional at first instance, files an appeal that only takes effect if the other party appeals.
By the time of the CoA order in this case, the deadline for filing an appeal had passed, and so the CoA invited AorticLab to file their conditional appeal with a request for re-establishment. Looking at the UPC Registry entries for the case, AorticLab have duly done this and so we will watch next steps with interest, including the point about the costs for the first instance counterclaim.
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