The UPC's LD Hamburg remains firm on late-filed submissions (UPC_CFI_461/2024; UPC_CFI_718/2024)
UPC Case Law | 04.02.2026
Court docket: LD Hamburg , decision of 05.11.2025 UPC_CFI_461/2024; UPC_CFI_718/2024 [EP 2476814]
Parties: Dolle A/S v. FAKRO Dachflächenfenster GmbH
Contributor: Marcel-Xavier Peigné
Headnote
- The term "the same invention" in Article 87 EPC must be interpreted as meaning that a claimed invention is to be regarded as the same invention as the invention in an earlier application if the skilled person can derive the subject-matter of the claim directly and unambiguously from the earlier application as a whole using general technical knowledge. This standard corresponds to the disclosure standard for inadmissible extension (confirmation by the Local Chamber in Düsseldorf, UPC_CFI_115/2024, decision of 15 October 2025).
- In accordance with the Rules of Procedure, all attacks against the legal validity of the contested patent must, in principle, be introduced into the proceedings with the counterclaim for revocation. It is not permissible to assert a lack of inventive step on the basis of documents already in the proceedings only during the oral proceedings.
- A term that is only referred to in general terms in the claim cannot, without further specification, be limited to a configuration as described in the prior art cited in the patent in suit.
Relevance of the decision
Decision seems of interest regarding the front-loaded nature of the proceedings before the UPC and the admissibility of late-filed evidence and attacks.
Dolle A/S v. Fakro Dachflächenfenster GmbH examines an infringement claim with a counterclaim for revocation. Infringement and revocation were examined by the same Local Division (no bifurcation). The patent in question, EP 2 476 814 B1, was granted to Dolle.
The decision is interesting regarding the admissibility of late-filed facts and grounds for revocation (headnote 2). The decision highlights that attacks against validity must be introduced into the proceedings at the same time as the counterclaim for revocation, with strict restrictions on subsequently filed attacks or evidence.
When the counterclaim for revocation was introduced, the defendant (Fakro) raised a number of novelty attacks and inventive step attacks. Subsequent to filing the counterclaim, the defendant also put forward late-filed facts and evidence and a late-filed attack. These new facts, evidence and arguments were not admitted into proceedings.
Late-filed facts/evidence
New documents were filed after the filing of the counterclaim for revocation. To justify the late filing of the documents, Fakro argued that this was the result of an omission in a list of research hits by two search agencies.
The Division left the question open as to whether the documents could be admitted as ultimately they did not constitute prior art. Even if the Division left the question open, our impression when reading the reasons is that the Division seemed unconvinced by the arguments, given that the documents originated from the plaintiff (Dolle) and should have been subject to closer scrutiny.
Late-filed grounds
As for the late-filed ground, Fakro challenged, for the first time in the oral hearing, inventive step over a prior use already part of the proceedings, in the attacks for a lack of novelty.
The Division did not examine the new attack and rejected the objection as inadmissible, despite the attack being based on evidence already in the proceedings. The Division emphasised the “front-loaded procedural system”, to allow for the other party to be able to prepare an adequate defence and, at the same time, expedite the proceedings. The Division then concluded that “in principle”, a counterclaimant cannot introduce new attacks or new documents at the oral hearing as this would make it impossible for the other party to prepare. This stance appears stricter than the usual approach of the EPO’s Opposition Divisions, which is unsurprising given the UPC’s focus on expedited proceedings.
In summary, the main takeaways of this decision are:
(1) that new evidence filed after the initial statement of defence and counterclaim will not be admitted unless there are compelling reasons for not filing the evidence earlier,
(2) that particular attention should be paid to any evidence belonging to one of the parties, as they are less likely to be viewed as admissible at a later stage, and
(3) that new grounds for invalidity, even if based on evidence already in proceedings, will not be admitted if the other parties have had little or no time to prepare.