Appeals before the UPC
A party whose claims have been rejected in whole or in part at first instance has the option of lodging an appeal. The appeal proceedings before the UPC are unique in that appeals can be lodged against almost all decisions and orders of the Court of First Instance. Appeals are even possible during ongoing proceedings. However, the rules of procedure distinguish between appeals that are admissible without leave and those that require the leave of the Court of First Instance.
Appeal without leave of the Court of First Instance
Article 73 UPCA and Rule 220 RoP stipulate that an appeal may be lodged against a decision of the Court of First Instance (Article 73(1) UPCA, R. 220.1(a),(b) RoP). The appeal may be brought before the Court of Appeal within two months of the date of notification of the decision (Art. 73(1) UPCA, R. 224.1(a) RoP). The Statement of grounds of the appeal must be filed within four months of notification of the decision (R. 224.2(a) RoP). A fee is payable for the appeal, which corresponds to the Court fee in the First Instance and consists of a fixed fee and, where applicable, a value-based fee (R. 228, R. 370 RoP)[¹].
In addition, also orders issued by the Court of First Instance may be appealed in ongoing proceedings. This is a legal innovation of the UPC, as it concerns court orders issued during proceedings and prior to the final decision. However, an appeal without leave of the Court may be lodged only against orders referred to in Articles 49(5), 59, 60, 61, 62, and 67 UPCA and in Rule 97.5 RoP (Art. 73(2)(a) UPCA, R. 220.1(c ), 2 RoP). These are orders concerning the change of the language of the proceedings to the language in which the patent was granted without the consent of a party, the production of evidence, the preservation of evidence, the grant of provisional measures and the provision of information. In such cases, the appeal – together with the grounds for appeal – may be filed within 15 days of the notification of the Court’s decision to that effect (Art. 73(2)(a) UPCA, R. 224.1(b) RoP).
Appeal that requires leave of the Court of First Instance
All orders other than those referred to in Article 73(2)(a) UPCA and Rule 97(5) RoP may be appealed in the current proceedings with the leave of the Court of First Instance (Art. 73(2)(b)(ii) UPCA, Rule 220.2 RoP). Alternatively, they may be the subject of an appeal together with the appeal against the decision (Art. 73(2)(b)(i) UPCA, R. 220.2 RoP).
However, an appeal may only be lodged against a decision or order of the Senate or the panel of judges of the Court of First Instance. Therefore, if an appeal is to be lodged against a procedural order of the judge-rapporteur or the presiding judge, the case should first be submitted to the panel of judges for review in accordance with Rule 333 RoP at the request of one of the parties. This request must be submitted within 15 days of service of the order, must be substantiated and, where appropriate, must contain the evidence presented (R. 333.2 RoP). In addition, the party seeking the review shall pay a fee of EUR 300 (R. 333.3 RoP)[²]. The other party shall be given an opportunity to be heard. The panel must decide on the request for review as soon as possible and, if necessary, issue a revised order (R. 333.4 RoP).
This decision by the panel constitutes a procedural decision within the meaning of Rule 220(2) RoP and, if the application is granted, may be challenged by the opposing party by means of an appeal which requires the leave of the Court of First Instance or, without leave of the Court, by means of an appeal against the decision (Rule 333.5 RoP).
The above-mentioned sequence, namely first submitting the order for review to the entire senate or panel of the Court of First Instance and then filing the appeal, must be strictly adhered to. In this case, a distinction must then be made as to whether the panel has granted the leave to appeal in its decision.
If the panel grants the leave to appeal, an appeal may be lodged together with a statement of grounds for appeal within 15 days of the notification of the Court’s decision (Art. 73(2)(b)(ii) UPCA, R. 220.2, R. 224.1(b), 2(b) RoP). In this case, a fee of EUR 1,500 is payable.[³]
If the Court of First Instance refuses to grant leave, a request for a discretionary review to the Court of Appeal may be filed within 15 days (R. 220.3 RoP). As a refusal to grant the appeal is considered also if the Court of First Instance does not respond within 15 days of the order issued by one of its panels. In this case, the time limit for filing the request for discretionary review with the Court of Appeal begins immediately after these 15 days (R. 220.3 RoP). This request must be substantiated and, if necessary, contain the facts and evidence presented (R. 220.3, R. 221.2 RoP). In addition, a fee of EUR 350 must be paid for the request for discretionary review to the Court of Appeal, which does not arise in case the appeal is allowed. (R. 220.3 and R. 333.3 RoP).[⁴]
The request for discretionary review is assigned to the standing judge of the Court of Appeal, who may reject it without giving reasons (R. 220.4 RoP). Otherwise, the standing judge may grant the request after hearing the other party. In this case, he must determine whether and, if so, what further procedural steps are to be taken by the parties within what time limits (R. 220.4 RoP). Furthermore, a fee of EUR 1,500 is payable, whereby the EUR 350 Euro fee for the request for discretionary review is credited.[⁵]
The President of the Court of Appeal then assigns the review to a panel of the Court of Appeal for a decision. The Court of Appeal may consult the presiding judge or the judge-rapporteur of the panel of the Court of First Instance which has refused the leave order (R. 220.4 RoP).
Non-appealable decisions
However, there are few decisions or orders that cannot be appealed, such as an order rejecting an application to intervene (R. 317 RoP) and an order rejecting or granting an application for Re-establishment of rights (R. 320.7 RoP).
Content of the appeal proceedings
An appeal may be based on points of law and points of fact (Article 73(3) EPC). Thus, the requests, facts, evidence, and legal arguments presented by the parties in accordance with Rules 221, 225, 226, 236, and 238 RoP constitute the subject matter of the appeal proceedings (R. 222.1 RoP). The file of the proceedings before the Court of First Instance shall be consulted for this purpose.
New requests, facts, and evidence that were not submitted by a party during the proceedings before the Court of First Instance may be disregarded by the Court of Appeal. When exercising discretion, the Court shall in particular take into account: (a) whether a party seeking to lodge new submissions is able to justify that the new submissions could not reasonably have been made during proceedings before the Court of First Instance; (b) the relevance of the new submissions for the decision on the appeal; (c) the position of the other party regarding the lodging of the new submissions (Art. 73(4) UPCA, R. 222.2 RoP).
Suspensive Effect of an Appeal
In principle, the appeal does not have suspensive effect (Art. 74(1) UPCA). However, a party may file an application for suspensive effect (R. 223.1 RoP). This is particularly advisable in infringement proceedings where the defendant has been convicted at first instance, so that he can obtain the suspension of the provisional enforceability of the judgment.
The application for suspensive effect must contain: (a) the reasons why the lodging of the appeal should have suspensive effect and (b) the facts, evidence, and legal arguments put forward (R. 223.2 RoP). The Court of Appeal shall then decide on this application without delay (R. 223.3 RoP). In cases of extreme urgency, this application may even be made informally to the standing judge, who has decision-making authority in this regard (R. 223.4 RoP).
However, the above does not apply to appeals that require leave of the Court of First Instance, as these have no suspensive effect (R. 223.5 RoP).
Proceedings before the Court of Appeal
As in the Court of First Instance, the proceedings before the Court of Appeal consist of a written, an interim and an oral procedure (Art. 52 UPCA). However, the appeal proceedings, particularly the written ones, are significantly shorter than in the first instance. According to the Rules of Procedure, each party is only allowed to submit one written submission. For the appellant, this essentially comprises only the statement of grounds of appeal. For this reason, it is very important for the appellant to submit a fully developed statement of grounds, as this will be their only submission in the written proceedings. Although the appellant has the option of submitting a further submission (reply), if the respondent lodges a cross-appeal, this reply should only deal with the arguments from the cross-appeal and therefore cannot reinforce or even extend the appeal.[⁶]
The language of proceedings before the Court of Appeal shall be the language of proceedings before the Court of First Instance or the language in which the patent was granted, provided that the parties have agreed on this (Art. 50(1), (2) UPCA, R. 227 RoP). In addition, in exceptional cases, the Court of Appeal may designate another official language of a Contracting Member State as the language of proceedings, but only with the consent of the parties (Art. 50(3) UPCA).
The appeal proceedings commence with the filing of the appeal, whereby a distinction must be made between the Statement of appeal and the Statement of grounds of appeal. The Statement of appeal must contain the following formal information: a) the names and addresses for service of the appellant and the respondent, as well as their authorized representatives, b) the date of the contested decision or order and the file number of the first instance proceedings, and c) if applicable, the order for expedition of the appeal pursuant to Rule 9.3(b) RoP and the reasons justifying such order for expedition (R. 225 RoP). The Statement of grounds of appeal should contain the following: a) the parts of the decision or order that are being contested, b) the reasons for setting aside the contested decision or order, and c) the facts and evidence on which the appeal is based (R. 226 RoP).
After the lodging of the Statement of appeal, the Registry examines whether the appeal meets the formal requirements and, if necessary, requests the appellant to remedy any deficiencies within 14 days and to pay the corresponding appeal fee (R. 229.1, 2 RoP). If the appellant fails to correct the deficiencies or pay the fee within the set period, the appeal will be rejected as inadmissible (R. 229.4, 5 RoP). Otherwise, the appeal will be recorded in the register and assigned a file number (R. 230.1 RoP). The appeal is then assigned to a panel, which decides immediately – after hearing the parties – whether the appeal should be dealt with expeditiously (R. 230.2, 3 RoP). The judge-rapporteur is then appointed (R. 231 RoP).
Furthermore, the judge-rapporteur shall examine whether the Statement of grounds of appeal complies with the requirements of Rule 226 and, if necessary, shall set a time limit for amendment (R. 233.1, 2 RoP). If the appellant fails to amend the Statement within this period, the judge-rapporteur may, after giving the appellant an opportunity to be heard beforehand, reject the appeal as inadmissible (R. 233.2 RoP). This dismissal of the appeal, as well as that pursuant to Rules 224.1 and 229.2, may be challenged by the appellant within one month of service of the decision, without providing new grounds of appeal (R. 234.1 RoP).
On the other hand, the respondent can respond to the Statement of grounds of appeal by means of a Statement of response. This must be submitted within a period of three months from the date of service of the Statement of grounds of appeal in the case of appeals that do not require leave, and within fifteen days in the case of appeals that require leave of the Court of First Instance (R. 235.1, 2 RoP). The Statement of response may also contain a Statement of cross-appeal by the respondent, if applicable (R. 237.1, 2 RoP). For the cross-appeal is the same fee payable as for the appeal (R. 237.4 RoP). A cross-appeal is not admissible in any other form or at any other time and is also deemed to be withdrawn, if the appeal is withdrawn (R. 237.4, 5 RoP).
If no cross-appeal is lodged, the written proceedings are concluded with the submission of the Statement of response to the appeal. However, if a cross-appeal is lodged, the appellant can comment on the grounds of appeal raised in the Statement of cross-appeal by means of a Reply to the Statement of cross-appeal. The deadline for this is two months from the date of service of the cross-appeal, in the case of appeals not subject to leave and fifteen days, in the case of appeals subject to leave of the Court of First Instance (R. 238.1, 2 RoP).
Cases of exceptional importance and, in particular, where the decision in the action may affect the consistency and unity of the case law of the Court, may be referred to the full Court of Appeal by the panel on a proposal from the presiding judge (R. 238 A RoP).
Both the interim and the oral proceedings essentially correspond to the proceedings before the Court of First Instance (R. 239, 240 RoP). However, one special feature of the appeal proceedings concerns the period of notice for appeals without leave to appeal, if these are not expedited, which shall be at least two months, unless the parties agree on a shorter period (R. 239.2 RoP).
Decision of the Court of Appeal
The Court of Appeal shall either reject the appeal or set aside the decision/order of the Court of First Instance in whole or in part and replace it with its own decision/order (Art. 75(1) UPCA, R. 242.1 RoP). In exceptional cases, the Court of Appeal may refer the case back to the Court of First Instance for a decision and decide whether the same panel or a different panel should deal with the case (Art. 75(1) UPCA, R. 242.2(b) and 243 RoP). In the event of a referral back, the court is bound by the decision and the reasons given by the Court of Appeal (Art. 75(2) UPCA, R. 243.2 RoP).
The Court of Appeals in progress
As mentioned in detail above, the Court of Appeal has the task of reviewing the decisions and orders of the Court of First Instance, thereby ensuring a uniform interpretation of the law. This is particularly important for a new Court with new legislation – such as the Unified Patent Court with the UPC Agreement and the UPC Rules of Procedure – as there is a strong need for legal certainty and predictability in the application of the law, especially for a young institution. The number of decisions and orders already published by the Court of Appeal on various topics (including, in particular, the ordering of provisional measures and the change of the language of proceedings) shows that this process is already underway.[⁷]
The number of cases before the UPC is constantly increasing, which entails a proportional increase in cases before the Court of Appeal. For this reason, a third chamber of the Court of Appeal will be established in January 2026.[⁸]
Author: Dr. Olga Michala
email: michala@paustian.de
[¹] See Table of Court Fees of the UPC: https://www.unifiedpatentcourt.org/sites/default/files/upc_documents/ac_05_08072022_table_of_court_fees_en_final_for_publication_clean.pdf
[⁶] See Hüttermann, A.: Einheitspatent und Einheitliches Patentgericht, Teil 3: Das Einheitliche Patentgericht, Abschnitt 4: Berufungsverfahren, Kapitel 12: Strategische Überlegungen betreffend Berufungen, Rn. 1233
[⁷] See the Annual Report 2024 of the Unified Patent Court
[⁸] See details in https://www.unifiedpatentcourt.org/en/news/unified-patent-court-upc-announces-setting-third-panel-court-appeal