AorticLab v Emboline (CoA, 17 August 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In an order of 17 August 2026, given in the joined files UPC_CoA_40/2026 and UPC_CoA_123/2026, the Court of Appeal rejects Emboline’s request under Rule 333 RoP for review of its clarification order of 16 July 2026 on how a conditional counterclaim for revocation proceeds on appeal, and re-establishes AorticLab’s right to appeal on that counterclaim (EP 2 129 425). The order confirms that a counterclaim made conditional on a finding of infringement is permissible and sets out how it is handled on appeal.

Question

May a counterclaim for revocation be made conditional on a finding of infringement, what happens to it on appeal when the condition was not met at first instance, and can a party that expected to file a cross-appeal have its rights re-established?

Decision

The infringement action and the counterclaim are separate actions, and the condition is « inter-procedural » (paragraphs 18 and 19). Nothing in the UPCA or the RoP excludes a conditional counterclaim. Limiting it in this way needs no justification, and Rule 263.3 RoP applies by analogy, not Rule 265 RoP (paragraphs 21 to 29). Non-fulfilment of the condition does not extinguish the counterclaim, which stays pending during the appeal, as « the Court » includes the Court of Appeal. The latter decides it itself without referral back (paragraphs 32 to 43). AorticLab, which could reasonably expect to file a cross-appeal, is re-established under Rule 320 RoP, its appeal is declared admissible and the time for the response is shortened to two months (paragraphs 47 to 56).

Key points for practice

• A party whose conditional counterclaim was left undecided must file a separate appeal within the Rule 224.1(a) RoP period, not merely a cross-appeal (paragraphs 20, 36, 37 and 49).
• Practical point: if the Court of Appeal finds infringement, it decides the counterclaim itself, without referral back to the first instance (paragraphs 40 to 43).

Provisions applied

Agreement on a Unified Patent Court

Arts 32(1), 33(3)(b), 43, 56(1), 65(2), 69(3), 75(1) and 76(1)

Rules of Procedure

Rules 9.3(b), 25, 118.2(a), 220.1(a), 224.1(a), 242.2(b), 263.3, 265, 320 and 333

Case law cited

Emboline v AorticLab, Court of Appeal, 16 July 2026, Rematec v Europe Forestry, Court of Appeal, 17 February 2026, Abbott v Sibio, Court of Appeal, 14 February 2025, Abbott v Sinocare, Court of Appeal, 17 April 2026, Guardant Health v Sophia Genetics, Court of Appeal, 2 July 2026

Related decisions

• Emboline v AorticLab, 13 January 2026, the Munich Local Division decision under appeal.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.