2025 Week 28
Over the last couple of weeks, we have looked at how the UPC deals with requests for extensions of time and requests that appeals should have suspensive effect. In this final part we look beyond these issues and consider how a party might try to reopen a final UPC decision where they see that something has gone seriously wrong.
Can you go again?
The UPC Agreement (UPCA) allows for a rehearing in suitably serious circumstances. This is governed by Article 81 UPCA and Rules 245-255 RoP. A request for a rehearing can be filed after a final decision of the UPC (this could be a decision of the UPC Court of Appel (CoA) or from a UPC court of first instance if no appeal was filed). There is an ultimate backstop of 10 years for filing the request, with protection for good faith user rights, but also the request must be filed within 2 months of the discovery of the ground on which the request for the rehearing is based. If the request for a rehearing succeeds, the CoA can re-open the proceedings for a new trial and decision.
Put briefly, a request for a rehearing can only succeed if the relevant decision was based on an act which has been held to constitute a criminal offence, or in the event of a fundamental procedural defect. Further details of relevant criminal acts are not given, but a mere allegation of criminality will not be enough – there needs to be a decision from a national court to this effect. For potential fundamental procedural defects, R.247 RoP sets out a non-exhaustive list:
(a) a judge of the Court took part in the decision in breach of Article 17 of the Agreement or Article 7 of the Statute;
(b) a person not appointed as a judge of the Court sat on the panel which took the final decision;
(c) a fundamental violation of Article 76 of the Agreement occurred in the proceedings which have led to the final decision;
(d) the decision was made without deciding on a request relevant to that decision; or
(e) a breach of Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms has occurred.
Article 76(2) UPCA says:
Decisions on the merits may only be based on grounds, facts and evidence, which were submitted by the parties or introduced into the procedure by an order of the Court and on which the parties have had an opportunity to present their comments.
The example at R.247(c) looks interesting, because it suggests a route to a rehearing on the ground that the court has made a decision without the parties having had an opportunity to comment on the legal or factual basis underpinning the decision.
But, as a further constraint on requesting a rehearing on the ground of a fundamental procedural defect, R.248 RoP makes it clear that the relevant defect must have been objected to during the previous proceedings and dismissed by the court, unless for some reason this objection was not possible.
So, can you go again? Well, in theory, yes. But the bar looks to be set seriously high. In the two cases reviewed below, the CoA has explained further.
10x v. Nanostring
10x v. Nanostring was a CoA decision on a request for a rehearing, following on from a series of early decisions of the UPC. At first instance, 10x were awarded a preliminary injunction (PI) by the UPC Local Division Munich. However, this was overturned on appeal in a groundbreaking decision which set out the UPC approach to claim interpretation and which considered that the patent was probably not valid.
10x filed an application for a rehearing at the CoA. Relying on Art.76(2) UPCA, their basic argument was that the CoA had taken its decision based on evidence that neither party had submitted and on which the parties had not been able to comment. They argued that the written decision of the CoA showed that the judges had relied on their own technical expertise in order to ascertain the capabilities of the skilled person. Specifically, the CoA wrote in the decision that the skilled person would have been able to deal with a particular technical problem at the priority date on the basis of the skilled person’s expertise. 10x argued that the decision appeared to hinge on one or more personal technical opinions of the CoA judges and, since 10x had not had an opportunity to comment on this, there had been a fundamental procedural defect of the type indicated in R.247(c) RoP.
In the decision on the request for a rehearing, the CoA (in a completely different composition to the preceding decision) firmly rejected these arguments. Reproducing large parts of the reasoning in the decision under review, the CoA said that what was being expressed in the decision was not new evidence, but merely the CoA explaining that it was equipped to deal with the technically complex subject matter. The evidence relied on was the evidence adduced by the parties and set out in the description of the patent.
The CoA therefore rejected the request for a rehearing as inadmissible, because the grounds on which it was based did not amount to a fundamental procedural defect.
Alexion v. Samsung and Amgen
A more recent request for a rehearing was also dismissed in Alexion v. Samsung and Amgen. As we explained in UPC Weekly (2025 Week 2), Alexion had tried to get a PI against Samsung and Amgen but this had been denied, at first instance and on appeal. Dissatisfied, Alexion filed a request for a rehearing. The Court of Appeal took the opportunity to explain a few fundamental points to Alexion and to their wider audience.
Alexion’s position was that the CoA had applied a new approach for claim interpretation without giving Alexion an opportunity to be heard on that issue, and had based its decision on incorrect facts. Unusually for a UPC decision, there was no detail provided about Alexion’s arguments on exactly how the original CoA decision was flawed in these respects.
The CoA explained that a request for a rehearing can only succeed if the relevant decision is based on an act which has been held to constitute a criminal offence, or in the event of a fundamental procedural defect. Reproducing the CoA’s own emphasis using bold, the CoA said:
The literal wording of Art. 81(1) UPCA makes clear that a rehearing may exceptionally be granted only if the decision suffers from one of these serious deficiencies. A rehearing is thus not a regular appeal proceeding, but an extraordinary legal remedy. Only fundamental procedural defects can be the basis for a rehearing.
Explaining the rationale for such a high bar, the court said that the default position is that a decision of the CoA is final. This gives legal certainty. Therefore, in order to qualify as a ground for rehearing, a procedural defect must be “so fundamental that it is intolerable for the legal system”. For a defect to be considered fundamental, the question is whether a different decision would have resulted without the defect.
Addressing Alexion’s complaint, the CoA noted that the court is free to assess the arguments and evidence brought by the parties. Even if the court’s assessment could be seen as incorrect, this is not enough for a rehearing, unless in some way the error constitutes a fundamental defect.
In the case at hand, one of the parties had relied on a decision of the EPO Technical Board of Appeal in relation to the patent, specifically for its view on the view of the skilled person at the priority date. The CoA considered that it was appropriate for the court to take this into account in their decision.
The CoA went on to consider how the courts should make findings on points of law, considering that the parties in the proceedings must have knowledge of case law that may be relevant to the case. Of course, it is to be expected that the parties will know the UPC’s own case law. But, additionally:
Case law that parties are expected to have knowledge of includes case law of the Technical Boards of Appeal (TBAs) and the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) relevant for the issues at hand and the arguments advanced. Although the Court of Appeal is not bound by such case law, there is reason to consider TBA decisions and – even more so – EBA decisions – since these Boards apply the same substantive law provisions of the European Patent Convention (EPC) as the Court. A similar approach has been and still is taken by national courts of the Contracting Members States and other countries party to the EPC, such as the UK, who have national laws that are largely based on the substantive law provisions of the EPC. When litigating before the Court, party representatives are thus expected to be also aware of the relevant case law developed by the TBAs and EBA.
The CoA went on to say that the court is not required to explicitly and exhaustively address every argument brought by the parties. Furthermore, the court need not give advance warning of its thinking on specific issues – there is no formal requirement in the UPC for a preliminary opinion before an oral hearing, for example. However, the CoA conceded that advance warning may be needed if the decision would not have been “objectively foreseen by the well informed representative”, for example where the decision would be inconsistent with and deviate from established case law, or would be based on unpublished case law.
As a result, the CoA decided that there was no fundamental procedural defect in the decision under review – indeed, they considered that it had not even been shown that there was an error. In a somewhat stinging parting shot, the CoA wrote:
Alexion in essence does not agree with the conclusions drawn by the Court of Appeal from the arguments and evidence before it. However, a mere disagreement with the reasoning and considerations by the Court of Appeal and the outcome of the case is not a ground for a rehearing.
The CoA clearly wants to send a message that a request for a rehearing is for truly exceptional circumstances – it’s not a further appeal.
