Irides: Weekly global patent litigation update

This edition features updates from: Mexico, the Unified Patent Court (UPC) and Argentina.

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

Mexico

Industrial Property Law reforms align national practice with international procedures.

On 3 April 2026, Mexico enacted reforms to the Federal Law on the Protection of Industrial Property, introducing changes to prosecution timelines, procedural certainty and remedies.

Key changes are: 

• Priority rights may be restored within two months of the expiration of the original deadline, reducing the risk of irreversible loss of priority and aligning Mexico with international practices.

• The introduction of a Mexican provisional patent application. Applicants may secure a filing date on the basis of a description identifying the invention, with a strict twelve month period to convert to a full application. The application will not be published or examined and may not claim priority from another application.

• The ability to request reinstatement of rights lost due to procedural errors such as failure to pay grant fees or missed deadlines.

• Streamlined prosecution timelines: INPI must now make a final decision within one year after the start of substantive examination. This will be facilitated by the reduction of the number of substantive office actions from four to two.

• Third-party observations are now available for utility models and industrial design applications, in addition to patent applications.
   

UPC

GC Aesthetics succeed in r.190 application for implant samples and key technical and regulatory files. [UPC_CFI_1357/2025, UPC_CFI_629/2025]

On 14 April 2026, the Brussels Local Division (LD) handed down an order under r.190 RoP requiring Establishment Labs S.A (LABS) to produce a range of evidence, including soft tissue implant samples and various technical and regulatory documents, within 21 days, following a successful application made by GC Aesthetics.

LABS brought a patent infringement action against a number of GC Aesthetics companies, and one of its distributors (collectively, GCA), in November 2025, alleging infringement of its patent EP 3 107 487 by GCA’s manufacture and sale of its Perle implant. GCA consequently brought a counterclaim for invalidity, including an allegation of prior use based on LABS’ own breast implant. GCA consequently made a reasoned request for LABS to provide related evidence within LABS’ control under r.190 RoP.

The Court considered that GCA had met various factors which an applicant needs to show on a prima facie basis under a r.190 application: 

• Has the requesting party put forward reasonably available evidence supporting its case?

• Has the requesting party specified the evidence sought?

• Is the other party’s confidential information able to be protected?

• Are the requirements of proportionality, equity and fairness satisfied? 

GCA had presented “reasonably available and plausible” evidence to prima facie support that the evidence requested would prove its assertions for all but one category of documents (post-priority date samples). LABS had not contested “specifically or in detail”. The threshold by which an applicant’s requested evidence is required in order to assist them to conclusively prove their assertions is “considered to be low”.

The question of whether the evidence fell within LABS control only applied to the requests for samples. Whilst LABS claimed that it had no pre-priority date samples in its possession in line with its internal policies, the Court was mindful of the absence of sanctions for a party’s failure to comply with its obligation under r.284 RoP not to “misrepresent cases or facts”, and that there was a lack of evidence of said policy and proof of actual sample destruction. The Court, of its own volition, therefore ordered LABS to produce two witness statements from duly authorised officers specifically stating the actual unavailability of the samples.

The Court imposed a confidentiality club, as GCA had proposed, limiting visibility of any confidential information to independent experts and one natural person of GCA, plus GCA’s legal team. 

The decision confirms that an applicant under r.190 RoP can submit an application at any stage of the proceedings, including prior to the Reply to the Defence and Counterclaim, where it is clear which facts need to be proven and what is in dispute. LABS claimed a number of GCA’s requests were too broad but failed “to put forward detailed arguments which limitation of the requested information would suffice”. Preference was therefore given to GCA’s actual requested measures, as LABS could mitigate its burden in complying with the order i.e. if it declared that its own implants were publicly available pre-priority date.

21 days was considered a proportionate timeframe for providing the evidence, with the Court noting that it would be procedurally efficient for LABS to have already made “the necessary preparations to comply with the order from the date the Application was introduced” i.e. 20 March 2026. LABS was also ordered to produce a witness statement from a duly authorised officer or person acquainted with the facts to confirm the provisions of the order had been complied with in full, and that any redactions applied by LABS related only to irrelevant information. 
 

UPC

The Milan Central Division clarifies holistic novelty assessment and the limits of auxiliary requests. [UPC_CFI_480/2025]

On 10 April 2026, the Milan Central Division (CD) revoked Flexicare (Group) Limited’s unitary patent EP 4 185 356 following a revocation action brought by Fisher & Paykel Healthcare Limited. The patent concerned a nasal cannula with a swivel connection intended to improve patient comfort. The Court held that claim 1 as granted lacked novelty over WO 2015/193833 (D2), and that none of the auxiliary requests could rescue the patent, either because they also lacked novelty or because they lacked clarity.

The Court reiterated previous guidance on claim interpretation under Art. 69 EPC and its accompanying Protocol. In particular, it emphasised that any feature in a patent claim must be interpreted in light of the claim as a whole (Court of Appeal (CoA) in VusionGroup v Hanshow), and that embodiments in the description will generally not limit the scope of the claims (Munich LD in Brita v AQUASHIELD). Finally, the Court reaffirmed that claim construction is a matter of law for the Court, rather than for party-appointed experts.

The patentee argued for a narrow construction of claim 1 to avoid the novelty attack. For example, claim 1 required a swivel connection with “an axis of rotation configured to be substantially normal to a face of the user”. The patentee contended that this limited the swivel connection to a single plane of rotation, arguing that nowhere does the description suggest a multi-axis rotational arrangement. However, the Court rejected this construction given there was no explicit limitation in claim 1. The Court also held that although a gas tube is referred to in claim 1 (“a connector for attaching a gas tube to the manifold”) this was merely a purpose feature and so the gas tube was not required. A broad construction was also applied to D2, with the Court assessing components by their technical function, and not their label.

Applying these broad constructions, the Court found that D2 directly and unambiguously disclosed all features of claim 1. In reaching this conclusion the Court stated that if “one way of ‘mapping’ [the prior art onto the claim] leads to the assessment that a piece of prior art is novelty destroying, this leads to the result that the patent must be revoked”.

The patentee’s first auxiliary request was admitted but also failed for lack of novelty. 

Auxiliary requests 2 to 13 all failed for lack of clarity under Art. 84 EPC. These requests introduced a feature of an aperture which “fluidically connects the gas tube to the manifold”. The Court found that this introduced ambiguity as to whether the gas tube had become a mandatory component of the claim. Finally, the Court found no implicit request to maintain the patent on the basis of the dependent claims, as the patentee neither defended their validity nor restructured them once claim 1 fell. The Court emphasised that it is for the patentee, not the Court, to formulate and formally restructure amended claims that could survive revocation, and that dependent claims cannot be salvaged in the absence of a clear amendment request that complies with Art. 84 EPC. 
 

UPC

Paris Local Division refuses provisional measures in SharkNinja v Groupe SEB, highlighting the role of implicit disclosure in novelty. [UPC_CFI_ 1594/2025]

On 10 April 2026, the Paris LD issued a decision dismissing SharkNinja’s application for provisional measures in respect of EP 3 689 198, having concluded that it was more likely than not that the patent lacked novelty. The application had originally been brought on the basis of two patents covering SharkNinja’s popular “Foodi” range of cooking devices, but one of them, EP 3 689 201, was withdrawn during the written phase of the proceedings. The decision forms part of a wider dispute between the parties, who are direct competitors in the small kitchen appliances market, with related UPC litigation already pending between them with SEB as claimant. 

The Court’s novelty analysis was notable for its focus on implicit disclosure. The decisive issue was not whether Chinese Utility Model CN202312830U (CN 830) explicitly disclosed every element of the claim, but rather whether there was implicit disclosure of a particular component. The component in question, a fan, was not itself expressly discussed in the citation, but was deemed inherently necessary to support the air fryer functionality that the art disclosed. The Court reiterated that, for novelty purposes, a feature may be disclosed not only expressly but also implicitly, where the skilled person would “inevitably and without reasonable doubt” derive it from the prior art.

Applying that approach, the Court accepted that CN 830 disclosed all of the claimed features, including “all the essential elements” for an air frying mode, even though the document did not explicitly mention an air frying mode (or the necessary fan). The presence and orientation of an electric motor in the figures were sufficient, in the Court’s view, to lead the skilled person to conclude that a fan must necessarily be present, since there was no technically plausible alternative explanation for the presence of the motor. That implicit disclosure of the fan was decisive, because it underpinned the finding that the prior art anticipated the claimed air frying functionality. 

The decision also provides useful guidance on interim costs awards. Following the withdrawal of one of the patents and the dismissal of the application on the other, SharkNinja was treated as the unsuccessful party overall. Deciding only on interim costs for the withdrawn patent, the Court first reiterated the principle set out by the CoA in Meril v Edwards that interim costs awards will generally be capped at 50 per cent of the applicable ceiling of recoverable costs for the case as a whole, meaning that a maximum of EUR 150,000 could be awarded. The Court then also took account of the fact that no oral hearing had taken place for the withdrawn patent (and thus no hearing-related costs had been incurred), and applied a further reduction in costs, granting SEB an interim award of EUR 120,000.
 

UPC

Court of Appeal reaffirms approach to Security for Costs. [UPC_CoA_21/2026] 

On 7 April 2026, the CoA reaffirmed that a request for Security of Costs (SoC) may be made against an appellant, regardless of the party’s status as a claimant/defendant in first instance proceedings. However, it refused to exercise its discretion to stay ongoing appeal proceedings pending payment of an earlier costs order. This decision follows numerous others in the litigation between the parties: Suinno Mobile & AI Technologies Licensing Oy (Suinno) and Microsoft Corporation (Microsoft).

Suinno initiated an infringement action against Microsoft before the Paris CD, whereupon Microsoft lodged a counterclaim for revocation. Suinno failed to pay the SoC ordered by the CD in respect of Suinno’s claim, and Microsoft therefore requested, and ultimately obtained, a decision by default from the CoA. Following this final dismissal of the infringement action, Suinno also failed to pay Microsoft’s awarded costs. The revocation counterclaim continued, however, in which the Court found in favour of Microsoft. Again, Suinno was ordered to pay Microsoft’s costs. Suinno appealed the revocation decision, and this appeal was ongoing at the time of the judgment. 

By way of an application in the appeal proceedings, Microsoft sought: (i) SoC for the appeal; (ii) a stay of the appeal proceedings pending payment of SoC for the appeal and payment of the costs associated with first instance proceedings.

The Court reaffirmed that Art. 69(4) UPCA permits an order for security for costs only against the “applicant”, defined as the party initiating the relevant proceedings finding that the specific terms of Art. 69(4) UPCA took precedence over the more general provisions in r. 158.1 RoP. Because, however, it is the appellant who initiates appeal proceedings, then that appellant is the applicant for the purposes of Art. 69(4) UPCA, with the result that the respondent is entitled to seek security for costs in the appeal. If both parties lodge an appeal, each party may only request SoC in respect to the costs of the other party’s appeal. This also applies in the case of a cross-appeal. The Court confirmed that this principle applies even where the respondent was the claimant at first instance, subject only to a narrow exception where the defendant can show a manifest error in the first instance decision.

The Court was guided by the principle that a party who is not involved in proceedings on their own initiative should be protected from difficulties in enforcing a claim for reimbursement of costs. Applying this principle, the Court held that Microsoft’s request for SoC was admissible insofar as it related to costs to be incurred in the appeal proceedings, and then granted the application for security. In terms of the substance of the application, the Court attached significant weight to the fact that Suinno had failed to pay the substantial costs previously ordered in the infringement proceedings and had not put forward evidence to dispel concerns about its financial position. The Court also rejected Suinno’s argument that the conclusion of the infringement action rendered the counterclaim for revocation, and related procedural requests, inadmissible, noting that a counterclaim has an autonomous existence. The Court drew an inference from r. 265.2 RoP, under which the withdrawal of an action by the claimant shall have no effect on any counterclaim in the action.

The Court also concluded that once a costs decision has been issued for incurred costs at first instance, a request for security in respect of those costs is no longer permissible. 

By contrast, Microsoft’s application for a stay of the appeal proceedings until Suinno had satisfied the outstanding infringement costs award was rejected. In the Court’s view, the proper administration of justice did not require a stay: it emphasised the UPC’s commitment to expeditious proceedings and the principle that a party’s financial difficulties, without more, do not justify halting proceedings. The Court considered that the protection afforded by an order for SoC was generally sufficient, and that the possibility of additional costs being incurred before security was provided did not warrant a stay. However, the Court did grant a limited extension of time for Microsoft to file its statement of response, pending payment of the further awarded SoC.
 

Argentina

Patent Office updates patent practices regarding PCT amendments.

The Algerian National Institute of Industrial Property (INAPI) has begun rigorously enforcing the provisions of Art. 28, 41, 51 and 78 of the PCT Rules. Under this updated administrative procedure, any voluntary amendments to the description, claims, or drawings of an application must be submitted to INAPI within one month of the application’s entry into the Algerian national phase.

INAPI historically accepted amendments filed concurrently with responses to Office Actions during the examination stage. Now, further modifications to the substance of the application are effectively barred after the abovementioned deadline, save for the rectification of manifest errors. Modifications after this deadline require legal proof of the error and a fee payment. In the absence of these formalities, the patent will be delivered in its original filed state. This new approach has retroactive effect and applies to all pending applications. 

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

Episode 47: Private Transcripts of Oral Hearings Permissible Under r. 115 RoP.

Episode 48: Court of Appeal reaffirms strict duty of candour in ex parte evidence orders.