UPC confirms that it lacks competence to grant abstract obviousness declarations

Patentees should take encouragement from an important limitation recognised in the Milan Central Division’s order in Sandoz v Novo Nordisk (UPC_CFI_2221/2026). It confirms that the UPC lacks competence to entertain requests for abstract declarations on the validity of subject matter. Specifically, a declaration that a composition was obvious at a priority date, independently of a specific patent right. This decision prevents an attempt by Sandoz to turn simple revocation proceeding into a much broader attack on a wider patent portfolio, including third party rights.

The Order relates to a preliminary objection, filed by Novo, in revocation proceedings brought by Sandoz concerning a semaglutide unitary patent, UP 3 689 365. Novo’s preliminary objection succeeded in confirming that the court lacks competence for the broad declaratory relief mentioned above. It also contained additional objections on two further requests, which the UPC has confirmed it has competence to hear - subject to some terms. Put simply, the UPC has competence to take steps to preserve proceedings before it. This includes competence to determine a revocation action pending before it despite withdrawal of the patent, and take steps to prevent a patentee from withdrawing a patent application at the EPO while a UPC action is pending.

Competence is not entitlement to relief. While it seems likely that the decision on competence is intended to preserve the UPCs power to order relief where there is abusive behaviour, the court has not yet considered questions of admissibility, the merits, the scope of relief and the conditions for any protective order, which remain for determination in the main proceedings. The UPC expressly noted that factors before it were not sufficient evidence of misconduct on Novo's part to warrant the grant of relief at this stage.

Permission to appeal was granted.

Bristows (Ireland) represents Novo in the proceedings. The Bristows team for the preliminary objection is led by Claire Phipps-Jones, and further includes Katie Cambrook, Eden Winlow and Rachel Mumby.