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Admissibility of asserting a limited version of a patent claim in proceedings for provisional measures before the Unified Patent Court
The Court of Appeal of the Unified Patent Court (“UPC”) ruled in an order dated March 27, 2026 (UPC_CoA_898/2025 – ONWARD v Niche) on the question of whether a non-granted version of a patent’s claims may also be asserted—possibly as an alternative—in proceedings on applications for provisional measures.
I. Facts
The applicant and appellant (hereinafter “Applicant”) is the owner of the contested patent EP 3 421 081 relating to a system for neuromodulation. The respondent and appellee (hereinafter “Respondent”) offers and sells, among other things in Germany, a system for stimulating the spinal cord as well as associated electrode pads. The Applicant asserted direct, or alternatively indirect, infringement by the stimulation systems as well as indirect infringement by the electrode pads.
In the first instance, the Applicant had filed a total of eight auxiliary claims based on a limited version of the contested patent. The Munich Local Division rejected the application due to doubts regarding the novelty of claim 1 in its granted version (Munich Local Division, Order of Oct. 17, 2025, UPC_CFI_693/2025). The Munich Local Division also rejected the auxiliary requests. In the opinion of the Munich Local Division, ordering provisional measures based on an amended version of the claims was generally out of the question. The summary proceedings were not intended to order provisional measures, even though the granted version was clearly deficient. Pursuant to Article 62 of the Agreement on a Unified Patent Court (“UPCA”), the court must be satisfied of the validity of the patent in its granted version. The “patent in question” under Rule 211(2) of the Rules of Procedure of the UPC (“RoP”) does not refer to an amended patent. If the patent owner considers (alternative) claims based on an amended claim version to be necessary, this already implies that the granted patent is likely invalid. The Munich Local Division did not rule on the issue of patent infringement due to lack of relevance to the decision.
In its appeal, the Applicant asserted the main claim based on granted claim 1 of the patent in dispute, and in the alternative, a combination of claim 1 with subclaim 9 and features of subclaim 7. Following a negative introduction by the Court of Appeal during the oral proceedings, the Applicant submitted the alternative claim unconditionally as a new main claim.
II. Decision of the Court of Appeal
The motion based on the limited claim wording was found to be admissible but unfounded.
1. Auxiliary motions in proceedings for provisional measures
The Court of Appeal first explains that the principle of party disposition applicable under Art. 76(1) EPGÜ also permits a possible joinder of claims within the context of filing a motion. If a corresponding auxiliary claim is introduced only after the filing of the application, Rule 263.1 RoP applies. If the main claim is unsuccessful, the admissibility of the auxiliary claim is determined in accordance with Rule 263.2 RoP.
In the context of Rule 263.2 RoP, particular consideration must be given to the summary nature of the expedited proceedings. Admission must therefore be compatible, in particular, with the speed of the proceedings, the shorter deadlines, the limited scope for taking evidence, and the nature of the proceedings as a provisional measure. As a rule, only a single auxiliary request or a small number thereof may be considered appropriate. Furthermore, it constitutes a new request in the appeal proceedings if the wording of a request filed at first instance is amended (for example, on the grounds of a more accurate translation of the patent claims drafted in another language).
If a new auxiliary request is filed only in the appeal proceedings, its admissibility is at the discretion of the court pursuant to Art. 73(4) UPCA, R. 222.2 RoP. Here, too, the summary nature of the expedited proceedings must be taken into account, as well as the fact that the respondent may be deprived of a level of review. Therefore, as a general rule, restraint should be exercised in admitting such claims.
Regardless of whether an unconditional transition from the main claim to the auxiliary claim constitutes an unconditional restriction under R. 263.3 RoP, an amendment to the complaint under R. 263.1 RoP, or a partial withdrawal under R. 265 RoP, this is admissible in any case. In this respect, a parallel pending main action based on the same facts between the same parties does not give rise to a legitimate interest on the part of the respondent in a decision on the original main claim, since the decision of the Court of Appeal has no binding effect on the main action. In particular, the Local Division is not bound by the Court of Appeal’s interpretation or prognosis regarding the legal position.
2. Assertion of a limited version of the claim
The Court of Appeal ruled that the assertion of a non-granted version of the claims in proceedings for provisional measures is not excluded from the outset.
In this respect, the Court of Appeal disagreed with the view of the Munich Local Division that the “patent in question” in Rule 211.2 of the RoP refers to the granted version of the claims. Citing various provisions of the UPCA and the RoP, the Court of Appeal explained that “in question” is rather used in reference to the specifically asserted patent, i.e., the patent at issue. In doing so, the legislature was aware of the distinction from the granted version (see R. 30.1(a) RoP). In this respect, there is no basis for interpreting “the patent in question” in R. 211.2 RoP differently.
Nor would the summary nature of the proceedings for provisional measures preclude this per se. The shorter time limits and the possibility of ex parte proceedings exist regardless of the specific wording of the claims at issue. Furthermore, the respondent’s ability to defend itself is not automatically restricted, as only the specific claim asserted is relevant, not an unmanageable number of combinations.
Admissibility is ultimately a matter of the individual case. Any potential curtailment of the respondent’s legal protection is taken into account in this regard within the framework of the balancing test under R. 211.3 RoP and/or within the framework of necessity.
In any case, the assertion of a limited version does not justify the conclusion that the patent is defective in its granted form. Rather, it can be assumed that the applicant considers the limited version to be infringed and, with a high degree of probability, legally valid; thus, it represents the safest way to successfully enforce the patent in summary proceedings. Furthermore, a prior EPO limitation procedure lasting several months cannot be required, as this would conflict with the urgency of proceedings for interim measures. In any case, regardless of whether a patent is asserted in its granted version or in a limited version, the court must itself obtain sufficient certainty regarding the validity of the patent pursuant to R. 211.2 RoP.
3. No infringement of the patented invention
However, the Court of Appeal was unable to reach a sufficient conviction that the patent in dispute had been infringed.
The asserted claim version required, for a direct infringement, that the challenged embodiments exhibit programming in accordance with the claims in their as-delivered state. It was found, however, that the challenged embodiments were distributed only without programming. It could not be assumed that any programming in accordance with the claims performed by the purchasers (so-called extended workbench) would be attributable to the Respondent. For this to be the case, the programming would have to result automatically or inevitably. However, in the absence of corresponding instructions or guidance in the user manuals, this could not be discerned.
An indirect infringement failed due to the absence of the subjective elements of the offense. In this respect, the objective circumstances did not allow for the conclusion that the purchasers intended to use the product in a corresponding manner. Nor had any specific case of actual subsequent patent use been presented.
III. Conclusion
The Court of Appeal’s ruling clarifies a highly practical issue and is particularly welcome for patent holders. At the same time, it should be noted that the admissibility of alternative motions in proceedings concerning provisional measures is determined on a case-by-case basis, in which the court considers all relevant circumstances and the admission ultimately remains at the court’s discretion.
It is therefore advisable to file any auxiliary claims early in the proceedings so that both parties have the opportunity to comment on the matter. It makes sense to include “in particular” motions already in the initial application. However, it must be noted that, as a rule, only one or a few auxiliary claims are likely to be considered an appropriate number. In addition, it is often only after the respondent’s objection that it becomes clear what limitations might be necessary to distinguish the invention from the prior art or to overcome an inadmissible extension. In such a case, an amendment to the application or a shift from the main claim to an auxiliary claim would be an option.
If a reply to the objection is permitted, a subsidiary claim should be filed no later than with this pleading so that the opposing party can, in any event, defend itself in writing before an oral hearing—if one is scheduled.
It is also evident once again that an early review of the legal status of one’s own patents is advisable. This is all the more true in the already time-sensitive proceedings for provisional measures. After service of the respondent’s objection, there are typically only a few weeks remaining to draft the reply to the objection and to consider any possible limitations.