Winning at First Instance, but Still Having to Appeal? The UPC Clarifies Conditional Counterclaims for Revocation

Ordinarily, a party that succeeds at first instance has little reason to think about an appeal.

The UPC Court of Appeal’s recent Order of 16 July 2026 () shows that this is not always the case. Rather than addressing infringement or patent validity, the Court dealt with a procedural question that had not previously been answered by either the UPCA or the RoP:

What happens if a defendant makes its counterclaim for revocation conditional upon a finding of infringement, and the Court of First Instance finds that there is no infringement?

In answering that question, the Court not only confirmed that such a conditional counterclaim is permissible, but also clarified the procedural steps that may become necessary if the infringement claimant later appeals.

1. Does the case really end with a finding of non-infringement?

In the present case, Emboline brought an infringement action against AorticLab. AorticLab filed a counterclaim for revocation but, during the oral hearing, limited it so that the counterclaim would only be pursued if the Court found the patent infringed.

The Munich Local Division accepted that approach and ultimately found no infringement. Since the condition attached to the counterclaim was not fulfilled, it did not decide on the revocation action.

At first sight, the outcome appears straightforward. The defendant obtained a finding of non-infringement, and the Court dealt with the counterclaim exactly as requested.

The difficulty arises if the infringement claimant later appeals. What if the Court of Appeal overturns the finding of non-infringement and concludes that the patent has in fact been infringed? What then becomes of the counterclaim that was never decided?

2. The Court of Appeal: the defendant still has a legitimate interest in appealing

The Court of Appeal considered that the defendant does have a legitimate interest in appealing, even though the Court of First Instance acted in accordance with its own conditional request.

The reason is simple. If the Court of Appeal later finds infringement, the condition attached to the counterclaim becomes fulfilled. In that event, the first-instance decision that the condition had not been met, and therefore that there was no need to decide the counterclaim, must itself be set aside.

To address this procedural gap, the Court introduced a practical solution. A counterclaimant may lodge a conditional appeal, effective only if the infringement claimant files an appeal against the infringement decision. If no such appeal is lodged within the applicable time limit, the conditional appeal is treated as not having been lodged, and no appeal fee becomes payable.

The Court further clarified that the counterclaim remains conditional on appeal unless the counterclaimant successfully applies for leave to pursue it unconditionally. If the Court of Appeal ultimately finds infringement, it should, as a rule, decide the revocation counterclaim itself rather than remit the case to the Court of First Instance.

3. Why this Order matters

The Order does not change the substantive law on infringement or patent validity. Instead, it fills a procedural gap left by both the UPCA and the RoP.

For parties choosing to make a counterclaim for revocation conditional upon a finding of infringement, the Order now provides a clear roadmap for the appeal stage. A finding of non-infringement at first instance does not necessarily bring the procedural issues to an end if the infringement claimant decides to appeal.

One final aspect of the Order is also worth noting. The Court acknowledged that the procedural route it set out had not previously been established under either the UPCA or the RoP. For that reason, it expressly observed that AorticLab may wish to request re-establishment of rights under Rule 320 RoP. That observation is directed to the particular circumstances of this case, rather than laying down a general rule for future proceedings.


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