Irides: Weekly global patent litigation update

This edition features updates from: The United Kingdom (UK), South Africa and the Unified Patent Court (UPC).

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world.
 

UK

Patents Court rules on the interpretation of Art. 3(d) of the SPC Regulation where a monotherapy is authorised after a combination therapy.
[Laboratorios Leon Farma SA v The Comptroller General of Patents [2026] EWHC 663 (Ch)]

In a judgment handed down on 20 March 2026 by Douglas Campbell KC sitting as a High Court Judge, the Patents Court has ruled that a previous Marketing Authorisation (MA) for the combination A+B is to be taken as the first authorisation to place A on the market such that a later MA for A alone is not to be treated as the first authorisation for the purposes of Art. 3(d) of the SPC Regulation. This judgment relates to what may be regarded as a “reverse-Georgetown” situation. Many readers will recall that in 2011, the CJEU held in the combined Medeva and Georgetown references that where there was a patent for A and an MA for A+B, an SPC for A could be granted on the basis that the MA for A+B is an MA to place A on the market. In the present proceedings, Leon Farma sought an SPC for drospirenone based on an MA for this compound as a monotherapy. However, there was a previous MA for the combination product drospirenone and estrogen and the Court held that this previous MA was to be treated as a first MA to place drospirenone on the market as a medicinal product. An auxiliary request for an SPC for “drospirenone (not containing any estrogen)” was also rejected.
 

South Africa

Supreme Court of Appeal set aside the Commissioner of Patents’ revocation of UC’s Xtandi patent and clarifies the threshold for entitlement. 
[The Regents of the University of California v Astellas (294/2025) ZASCA 30]

On 17 March 2026, the Supreme Court of Appeal (SC) handed down a decision in proceedings between Regents University California (UC) and Astellas (together the Appellants) and Eurolab and Dis-Chem (together the Respondents).

UC is the holder of patent no. 2007/10870 (the Patent), which was filed in 2006 and which claims a novel hormone treatment with the active ingredient enzalutamide, used for treating prostate cancer. UC licensed the Patent to Astellas. Eurolab holds a marketing authorisation for a generic enzalutamide medicine, which is distributed by Dis-Chem. 

The Court of the Commissioner of Patents, Pretoria had previously revoked the Patent on the ground that UC was not a person entitled to apply for a patent under s.61(1)(a) when read with s.27(1) Patents Act 1978.

On entitlement, the SC was asked to consider whether UC was entitled to apply for the Patent under s.27 and in particular whether this entitlement needed to exist at the time of filing of the patent application, or whether it would have been sufficient for the entitlement to exist before the date of any later revocation proceedings.

The SC ruled that s.61(1)(a) establishes a clear requirement that the right to apply for a patent under s.27 must exist at the time the application is submitted. This means that the applicant must either be the inventor themselves or must have lawfully acquired the right to apply for the Patent before filing the application. Transferring rights after the application has been filed does not remedy the original deficiency. 

All inventors employed by UC signed patent acknowledgements agreeing to assign their rights in any inventions made in the course of their employment, with formal assignments to the first priority document being completed before the Patent was filed and the formal assignments to the second and third priority documents completed shortly after filing of the Patent. The remaining inventors were employed by HHMI, with the inventors assigning their rights in the inventions to HHMI in 2003. HHMI and UC entered into a collaboration agreement in 1986 under which UC was responsible for filing and prosecuting patent applications for any patentable inventions generated by HHMI under the terms of the agreement (including the invention claimed in the Patent). The patent was then formally assigned to UC three years after filing in 2009. Giving leading judgment, Smith JA concluded that the later formal assignment from HHMI to UC could not be taken into account as it post-dated the filing of the Patent (Molema J dissented on this point). However, it was sufficient to show that UC had “authority to apply” for the Patent at the filing date, which the 1986 collaboration agreement showed.

The SC therefore upheld the appeal, overturning the decision of the Commissioner of Patents. Having upheld the appeal, the SC then considered a number of other issues, ultimately resulting in the Patent being upheld but with no interim injunction granted. 
 

UPC

Düsseldorf Local Division reinforces strict Huawei v ZTE sequencing in Dolby’s Opus SEP win.
[UPC_CFI_135/2024 Dolby v Beko]

The Düsseldorf Local Division’s (LD) application of the Huawei v ZTE factors has clarified how that LD of the UPC intends to approach the framework. The judges treated the CJEU’s sequence as a structure to be followed by the parties, rather than a sequential checklist. It was reaffirmed that the SEP holder’s initial notification (Step 1) must be sufficiently detailed to put the implementer on notice of a potentially essential patent and that such a notice does not need to prove essentiality in advance. Once that threshold is met, the implementer must react in a timely and unambiguous manner that signals a genuine willingness to take a licence on FRAND terms rather than mere “lip service” (Step 2).

The UPC looked at the underlying competition law principles, finding that a SEP holder (in this case, for the Opus codec) holds a dominant position under Art.102 TFEU, as the end consumer (here, purchasers of smart TVs) would expect their TVs to work with all common codecs.

As regards Step 2, the implementer must do more than express abstract willingness. Its conduct must support its assertion that it is willing to take a FRAND licence. The LD left it an open question as to whether such a declaration could be made after injunctive proceedings had begun. The LD did not need to resolve this question, because it found that Beko had not made such a declaration of willingness in its defence, as Beko’s ‘willingness’ was justified on the grounds that it already had a licence to the AAC standard.

When assessing the Huawei v ZTE steps, the relevant factors are keeping open the possibility of a FRAND agreement. A breakdown in negotiations caused by the implementer’s lack of cooperation can expose that implementer to a finding of unwillingness. In this case, Beko did not respond to a letter containing claims charts for over 2 months prior to proceedings being brought.

Another consideration, although ultimately not decided by the LD, was whether the Huawei v ZTE framework should be adapted in a situation where the SEP holder had not made a FRAND declaration in relation to a standard (although the LD did note that this does not change the position under competition law and the SEP holder would still be subject to Art.102 TFEU). The SEP holder had not been involved in the development of the standard, and the pool in relation to the standard was set up at a later stage (the Opus standard itself was developed as open source).

Ultimately, Beko was found to have not complied with Step 2 so the rest of the framework was not analysed. On the technical side, the patent in dispute was found to be valid, standard-essential and infringed and an injunction was ordered.
 

UPC

Court of Appeal confirms that unprotected disclosures cannot later be made confidential and clarifies strict limits on confidentiality under r. 262 and 262A RoP.
[UPC_CoA_930/2025 EOFlow v Insulet]

This decision concerned EOFlow’s request for an order that certain information on the extent to which it had committed acts of infringement of Insulet’s patent be designated as confidential and withheld from public inspection.

Although it does not have direct effect under EU law, the TRIPS Agreement (in particular, Art. 39(2)) is a relevant source of law on which the UPC shall base its decisions (Art. 24(1)(d) UPCA) and therefore to consideration of whether information is a trade secret. Under TRIPS, the classification of information as a trade secret requires that (a) the information is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) the information has commercial value because it is secret; and (c) the information has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

There was no evidence that the relevant information was kept secret through protective measures taken by the parties. The Court rejected EOFlow’s argument that information provided to Insulet during an obligation to render accounts could only be used for the purposes of pursuing their claims for patent infringement and therefore had not become publicly available. Citing the decision of the Court of Appeal in Kodak v Fujifilm (UPC_CoA_699/2025, decision of 14 October 2025, para. 45) the Court held that there is no such implicit limitation.

Since the information was disclosed to Insulet without an order pursuant to r. 262A RoP, or without any other restriction (such as an agreement or voluntary undertaking), it lost its character as confidential information.
 

UPC

Court of Appeal reaffirms strict duty of candour in ex parte evidence orders.
[UPC_CoA_3/2026 Ecovacs v Roborock]

The Court of Appeal has upheld the revocation of an order obtained ex parte by Ecovacs against Roborock for inspection of robot vacuum cleaners at a trade fair. The Düsseldorf Local Division had revoked the order in its entirety (previously reported here), concluding that Ecovacs presented an incomplete and misleading factual picture in its application.

Ecovacs’ application stated that the trade fair was its only opportunity to secure evidence of Roborock’s manufacturing and supply activities because Roborock operated from Hong Kong and sold through European affiliates. However, this was inconsistent with facts submitted in Ecovacs’ parallel infringement action, which provided evidence that Roborock directly sold the allegedly infringing products to German customers via an Amazon webstore. The evidence sought could, therefore, have been obtained through ordinary test purchases, a significantly less intrusive route than the inspection ordered.

The Court agreed that the omissions and inconsistencies were not mere clerical errors or insignificant in nature but were material facts that were of central importance to the decision whether to allow the request. Furthermore, the errors could not be compensated for via later submissions made in response to the request for review. 

The Court also rejected Ecovacs’ suggestion of a CJEU referral, to clarify the scope of “relevant evidence” obtained pursuant to Art. 7 of Directive 2004/48. The issue under consideration was not the notion of relevant evidence but the applicant’s duty to disclose material facts which might influence the Court in determining whether to make an order without hearing the Defendant. Furthermore, the envisaged preliminary ruling would not concern the interpretation or validity of EU law, since the RoP are procedural rules that can be equated with national procedural laws.

The decision provides a reminder that applicants must disclose any material fact that might influence the court when it is being asked to proceed without hearing the defendant (r.192.3 RoP) and that where less intrusive means exist, particularly through straightforward test purchases, attempts to justify an ex parte inspection will face close scrutiny.
 

New episodes: You, Me and the UPC: Case by case

Episode 41: Court of Appeal refers questions to the CJEU to clarify the scope of long-arm jurisdiction

Episode 42: Court of Appeal reaffirms requests for public access documents under r. 262.1(b) RoP