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Decision dated 3 October 2025 – On the liability of the managing director for patent infringements and the concept of “offering” (Art. 63 UPCA and Art. 25(a) UPCA, Court of Appeal
(Art. 63 UPCA and Art. 25(a) UPCA, Court of Appeal, decision dated 3 October 2025, UPC_CoA_534/2024, UPC_CoA_19/2025, UPC_CoA_683/2024)
In a recent decision, the Appeal Court of the Unified Patent Court dealt, among other things, with liability of a managing director and clarified the term “offering” within the meaning of Art. 25(a) UPCA.
Facts
The subject matter of the proceedings was three jointly heard appeals against a decision of the Local Division Munich, with the Claimant and Defendants each appealing against the judgment in the infringement proceedings and the Defendants additionally appealing against the dismissal of the counterclaim for revocation. The Local Division Munich had upheld the infringement claim and ruled against the Defendant, but fell short of the Claimant’s request that the Defendant’s managing directors also be held liable alongside the companies themselves. The counterclaim for revocation was dismissed.
In its appeal, the Claimant and owner of the patent in suit therefore requested that the first-instance judgment be amended to hold the Defendant’s managing directors liable for the patent infringements. The Defendant’s two appeals sought to have the judgment in the infringement proceedings set aside and the counterclaim for revocation dismissed. For the first time in the appeal proceedings, the Defendant asserted a lack of inventive step with regard to a citation already introduced in the first instance.
Decision of the Court of Appeal
The Court of Appeal upheld the infringement with regard to the liability of the managing directors. It also confirmed the dismissal of the counterclaim for recovation. The Court of Appeal allowed the objection of lack of inventive step, as the citation itself had already been the subject of the first instance decision; however, this had no effect on the legal situation.
1. Offering within the meaning of Art. 25(a) EPCU
The Court of Appeal states that the term “offer” must be interpreted autonomously. It should also cover actions carried out in the run-up to contracts that could result in the patent holder losing business. An offer is therefore to be understood primarily in economic terms. A binding contractual offer, as is regularly required from a legal point of view, is not decisive. This broad interpretation means that even an “invitatio ad offerendum” that does not include a price constitutes offering in the meaning of Art. 25 lit. a) UPCA. The CoA thus clarifies that even the communication of (incomplete) framework conditions with an associated invitation to submit an offer is sufficient to constitute an offer within the meaning of Art. 25 lit. a) UPCA.
The term “offering” also covers cases where the patent-infringing product cannot be purchased directly from the defendant itself, but the defendant refers to an offer from a third party. It is irrelevant whether the third party actually distributes the patent-infringing product. The third party does not have to be ready to deliver.
2. Managing director liability
With regard to the question of managing director liability, the Court of Appeal first establishes some general principles. An infringer within the meaning of Art. 63(1) UPCA is also someone who does not carry out the acts themselves, but to whom the acts of the principal perpetrator are attributable because they are an instigator, accomplice or accessory. This interpretation is in line with the purpose of the provision, namely the effective enforcement of patent law. Art. 63 UPCA therefore also allows for a final order against those who commissioned or instigated the act of use. The autonomous interpretation also implies the liability of the accomplice. According to the Court of Appeal, an accomplice is someone who supports the acts of use by a third party even though they were aware of the patent infringement. Awareness of the unlawfulness is required for knowledge.
According to the above principles, a managing director can also be held liable for patent infringements. However, it should be noted that the mere position of managing director does not make him an accomplice or co-perpetrator. The managing director’s obligation to pay compensation based on his general management, control and organisational duties is therefore ruled out. In the opinion of the Court of Appeal, liability can only be considered if the managing director’s objectionable action goes beyond the typical duties of a managing director, for example in the case of the purposeful use of the company to commit a patent infringement. In addition, the managing director must be aware of the infringement. This requires not only that the managing director be aware of the circumstances giving rise to the patent infringement, but also that he be aware of its illegality. If he seeks legal advice on the question of patent infringement, he can generally rely on this advice until a declaratory decision is made in the first instance.
Company law does not preclude recourse against the managing director, as the purpose of the limitation of liability is to limit the personal liability of the shareholders, not to minimise the responsibility of the managing director.
Conclusion
The Court of Appeal interprets the term “offering” in a similarly broad manner. This means that it does not only refer to direct sales as such. The patent holder should be comprehensively protected. This approach is well known in German case law. According to the case law of the Federal Court of Justice, preparatory acts that enable or promote the conclusion of a subsequent transaction also constitute acts of use.
In contrast, the decision of the Court of Appeal regarding managing director liability differs from German case law. Unlike in German case law, the exercise of measures that are typically decided at the business level is not sufficient. Liability under Art. 63 UPCA requires that (1) the managing director is aware of the circumstances of the patent infringement and (2) is aware of the unlawfulness of the act. A notice from the patent holder, such as a request for authorisation or a warning letter, is not sufficient to establish awareness of the unlawfulness if the managing director has sought legal advice. This decision provides clarity for managing directors on how to behave when they become aware of a possible patent infringement. They can avoid liability by obtaining a legal/patent attorney’s opinion, which is not usually possible under stricter national case law.