Irides: Weekly patent litigation update

This edition features updates from: Canada, the Netherlands, the Unified Patent Court (UPC), the United Kingdom (UK) and Singapore.

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.
 

CANADA

Re-Examination Board Decision Does Not Preclude Patent Validity Challenge in Court.

In a recent decision, in the case of Zacon Limited v Provincial Doors Inc. the Ontario Superior Court of Justice has confirmed that in circumstances where a request for re-examination of a patent was not successful, a claim for invalidity of the same patent can still be made in the Courts (even when the same arguments on invalidity are made).

By way of background, under Canadian law it is possible for any person to request re-examination of a patent following its grant. If such a request is made the Commissioner of Patents shall consider if the request raises any substantial new question of patentability of the patent. If so, a re-examination of the patent occurs. In the case at hand, a request for re-examination of a patent titled “Balanced ventilation doors” was made. The request was duly considered but the Commissioner considered that it raised no substantial new questions of patentability, and the matter was closed. Consequently, the patentee in this case considered that meant it was not possible for the same party to subsequently bring a validity claim on the same basis before the Courts, as it would essentially be a second bite of the cherry and an abuse of process.

The Court disagreed. It distinguished re-examination, which looks at whether a patent should have been granted in the first place, and a validity action which looks at whether the patent is invalid. This distinction was based on the way in which the Patent Act considers “patentability” on the one hand and “validity” on the other. The Court was also firm that since it is the correct forum to challenge the validity of a patent which an examiner has found to meet the Patent Act and the Patent Rules, a denial of a request for re-examination (or indeed a finding of patentability by a re-examination board) does not usurp the Court’s ability to determine the validity of a patent.
 

NETHERLANDS

District Court denies Boehringer SPC for veterinary use.

In March 2005, Covis Pharma obtained an MA for ‘Alvesco’ for the control of asthma in humans.  In January 2020, Boehringer Ingelheim (BI) obtained an MA for ‘Aservo EquiHaler ciclesonide’ for the treatment of respiratory disease in horses. Alvesco and Aservo both contain ciclesonide as the active ingredient.

BI is the proprietor of a patent to the use of ciclesonide for treating respiratory disease in horses.  In June 2020, BI applied for an SPC for ciclesonide based on this patent and the Aservo MA.

The Dutch patent office rejected the application on the basis of Article 3(d) of the SPC Regulation as Aservo was not the first MA to place ciclesonide on the market.  BI first contested this decision within the patent office, which again rejected the SPC, and then appealed to the District Court.

In rejecting the SPC the Patent Office relied on C-673/18 Santen and C-31/03 Pharmacia Italia to rule that in answering whether there is an earlier MA under Art. 3(d), no distinction should be made between MAs for human and veterinary use.

BI ran two arguments on appeal. First, that although Santen overruled C-130/11 Neurim in respect of second medical uses within the same target population (i.e. humans), Neurim remained good law for different target populations (i.e. humans and horses).  Second, in granting the MA for Aservo, the European Commission (EC) had considered ciclesonide to be a new active substance.  BI also asked the Court to make a reference to the CJEU.

The Court rejected both arguments. In Pharmacia, the CJEU held that the SPC Regulation does not distinguish between medicinal products for human use and veterinary medicinal products. It acknowledged that this was overturned by Neurim, and that the facts of Santen were confined to second medical use within the same target population.  However, it found Santen should not interpreted so narrowly, and therefore it had completely reversed Neurim. Therefore, Pharmacia should be followed.

In respect of how the EC granted the Aservo MA, the Court ruled that SPCs should be evaluated solely on the basis of the SPC Regulation, and therefore differences between the legislation for human and veterinary medicinal products and how MAs were granted were irrelevant.

Finally, the Court rejected BI’s request for a reference to the CJEU, considering Santen and Pharmacia to have answered a materially identical question and therefore the issue was acte éclairé.  It noted that the SPC had also been rejected by the German and French patent offices, with the French decision upheld by the Paris Court of Appeal, and the German decision pending before the Bundespatentgericht.
 

UPC

Thresholds for Evidence Preservation under the UPCA. 
(UPC_CFI_63/2025)

On 28 May 2025, in the ongoing infringement action between Nanoval GmbH and ALD Vacuum Technologies, the Munich Local Division confirmed an earlier Order made against an alleged infringer for evidence preservation measures and inspection. Following a request pursuant to r. 197.3, the Court reviewed an Order made in February for inspection and evidence preservation. That Order was made without hearing the defendant.

The review application was unsuccessful, and the Court considered the applicant had submitted all evidence reasonably available. In particular, the Court noted the arguments made by the alleged infringer in the application for review did not address that there were sufficient indications of likelihood of infringement provided when the original Order was granted. Further, when granting the Order, the Court had concluded that the alleged infringer had deliberately failed to provide any specific information about its system in its protective letter and, therefore, was apparently unwilling to co-operate in clarifying the facts.  As such, the Order could have been avoided if sufficient information had been provided by the alleged infringer. 
 

UPC

Mannheim Local Division issues its first anti-suit injunction preventing Disney from seeking court orders in other jurisdictions. 
(UPC_CFI_445/2025)

As part of a global patent infringement dispute between InterDigital and Disney, infringement proceedings are pending before the Mannheim Local Division (LD). In parallel US proceedings Disney applied for an anti-suit injunction regarding proceedings being conducted in Brazil. Clarification was sought from Disney as to whether such an injunction would also be sought in the UPC proceedings, but no clear response was given. InterDigital therefore issued an ex parte application for an Anti-Anti-Suit Injunction (AASI) to prevent Disney from seeking an anti-suit injunction or an equivalent measure that would prevent InterDigital from enforcing decisions of the UPC in patent infringement proceedings over which the UPC has jurisdiction.

The Mannheim LD considered the application for the AASI was well founded and that the LD had jurisdiction to grant such an injunction. On the merits, the lack of a clear response in correspondence about whether an anti-suit injunction would be sought in relation to the UPC was a factor of relevance to the Court. When weighing the interests of the parties, the Court noted that the application was intended to secure the international context of the dispute and ensure that each jurisdiction is able to exercise its judicial powers undisturbed. Further, the Court noted that it was important that the proceedings, which relates to the SEPs, are conducted in accordance with EU antitrust laws as the UPC must ensure the primacy of European law. 
 

UPC

Court of Appeal reaffirmed its position to decide on acts of infringement committed before the entry into force of the UPCA. 
(UPC_CoA_156/2025)

On 2 June 2025, the UPC Court of Appeal (CoA) handed down its decision in ESKO v XSYS, finding, in line with Fives v REEL, that the UPC has jurisdiction over infringement claims relating to acts in the period before the entry into force of the UPCA. It also held that the UPC is competent to decide on alleged acts of infringement which have occurred between the date of the opt-out of a patent from the UPC and the date of the withdrawal of that opt-out.

ESKO’s patent was granted on 30 June 2021, and was opted-out from the UPC on 12 May 2023. This opt-out was withdrawn on 26 August 2024 and, the next day, ESKO commenced an infringement action against XSYS in the Munich Local Division of the UPC  in relation to acts alleged to have taken place before and after the entry into force of the UPCA on 1 June 2023, as well as before and after the withdrawal of the opt-out. XSYS raised a preliminary objection alleging the UPC had no competence and that the action should be declared inadmissible. The Munich Local Division rejected the preliminary objection, and granted leave to appeal.

XSYS’ appeal requested that the infringement action be dismissed to the extent it related to the time on or before the date of the effective date of the withdrawal of the opt-out. Alternatively, XSYS requested the proceedings be stayed to ask the CJEU to give preliminary rulings on the interpretation and application of the UPCA.

The CoA dismissed XSYS’s appeal, making the following findings:

• As per Fives v REEL, the wording of Art. 32(1) UPCA (“Competence of the Court”) does not provide for any temporal limitation of the UPC’s exclusive competence concerning acts of alleged infringement, whether these acts have taken place before or after the entry into force of the UPCA. This absence of any temporal limitation under Art. 32(1) UPCA reflects the object and purpose of the UPCA, to create a court common to the contracting member states;
• Regarding the rights to which the UPCA applies (Art. 3 UPCA, “Scope of application”), there is also no indication in this provision of any temporal limitation of the Court’s competence to infringing acts occurring only after the UPCA’s entry into force (again, considering Fives v REEL). As Art. 3 UPCA does not address temporal scope, it therefore leaves open whether acts occurring before the UPCA’s entry into force are within the scope of application of the UPCA;
• During the transitional period of the UPC, and unless the patent has been opted out, the exclusive competence of the UPC coexists in parallel with the national courts (Art. 83 UPCA). This concurrent competence, however, does not provide for a partial or limited competence of the elected court, such as in relation to the time period for which the chosen court is competent. This consistent with Art. 71c (2) of Regulation (EU) No 1215/2012, which provides for this concurrent competence during the transitional period, and which does not give exclusive competence to national courts during this period for acts of infringement occurring prior to the entry into force of the UPCA. It follows that the concurrent jurisdiction of the UPC and the national court during the transitional period also applies to acts of infringement occurring prior to the UPC’s entry into force; and
• Finally, when a patentee decides to withdraw an opt-out, the patent is brought back under the (exclusive) competence of the UPC. There is no partial or limited withdrawal: if the patent is opted-out, the patent is entirely out of the exclusive competence of the UPCA or, if the opt-out is no longer in force, the patent is entirely under the exclusive competence of the UPC, without limitation (without prejudice to the parallel competence of national courts during the transitional period under Art. 83). Any different approach would lead to a fragmented system that would be contrary to the UPCA’s objective and purpose. As a result, the UPC is competent to decide on alleged acts of infringement which have occurred between the effective date of the opt-out and the date of the withdrawal.
   

UK

Government announced maintenance of UK+ scheme.

The UK Government has announced that there will be no legislative changes to the current exhaustion of intellectual property regime (UK + Regime), which governs parallel importation laws.

Following the UK’s withdrawal from the EEA, the UK Government implemented an interim regime, the UK+ Regime, to govern parallel imports. Under this bespoke regional exhaustion regime, which has been in place since January 2021, intellectual property rights in goods are exhausted in the UK when those goods are first placed on the market in the UK or the European Economic Area (EEA) by or with the consent of the rights holder. 

In 2021, the Government launched a public consultation to review the current status of the UK+ Regime. The public consultation lasted 12-weeks and involved a number of key stakeholders, with views sought on 4 possible models:

1. Option 1: The Current UK+ Regime.
2. Option 2: The National Exhaustion Regime under which IP rights in goods are exhausted in the UK only when they are placed on the UK market. It was noted by the Government in the consultation that this was the least preferred option, which was only included for completeness.
3. Option 3: The International Exhaustion Regime under which IP rights are exhausted in the UK when placed on the market in any country.
4. Option 4: A Mixed Exhaustion Regime under which there would be a set of customised rules for specific goods, sectors or IP rights.

On 15 May 2025, the Government announced that the current UK+ Regime was here to stay, as the overall responses to the consultation had shown that the UK+ Regime was working well. The current regime was said to provide an effective balance between various interests of the country including the promotion of competition and fair access to IP protected goods. However, it does mean that there continues to be a mismatch between the position in the UK and the EEA, as goods legitimately placed on the market in the EEA can be parallel imported into the UK without requiring the permission of the rights holder, whereas the same is not true for goods being imported into the EEA from the UK. 
 

SINGAPORE

IPOS launches new patents programmes to accelerate filings.

On 20 May 2025, the Intellectual Property Office of Singapore (IPOS) officially launched two new acceleration programmes, SG Patents Fast (SG PF) and SG Trade Marks Fast, to help applicants receive faster office actions for their patent and trade mark filings. These programmes replace the earlier SG IP FAST pilot, which concluded on 31 December 2024, and introduce simplified eligibility criteria (intended to benefit enterprises and innovators), clearer timelines, and a new fee structure (intended to cover IPOS’ costs incurred in prioritising these applications).

Qualifying criteria for an acceleration under SG PF include that the patent application is not a divisional application in Singapore, and that the acceleration requests contain 20 or fewer claims.

The programme provides two options for applicants to choose from as to the pace of the acceleration:

• SG PF 4: Receive first office action within 4 months of successful application. 
• SG PF 8: Receive first office action within 8 months of successful application. 

Requests for acceleration can be made in relation to requests for search and/ or examination reports. Following this, a successful SG Patents Fast application will then qualify for acceleration of subsequent offices actions (i.e. response to written opinions).

There is a monthly cap of five requests per entity, although this cap does not apply to requests for acceleration of subsequent office actions.