Emboline v AorticLab (CoA, 16 July 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In an order of 16 July 2026 (UPC_CoA_40/2026, EP 2 129 425), the judge-rapporteur of the Court of Appeal clarified how a counterclaim for revocation made conditional on a finding of infringement operates. Having found no infringement on 13 January 2026, the Munich Local Division did not decide AorticLab’s counterclaim. Emboline appealed, AorticLab did not. The order accepts conditional counterclaims and explains how the defendant should proceed on appeal.

Question

May a counterclaim for revocation be made conditional on a finding of infringement and, if so, how should the defendant proceed where the patentee appeals a finding of non-infringement?

Decision

The condition is permissible: Rule 263.3 RoP applies by analogy, since the balance of interests is the same (paragraph 5). The defendant may appeal the decision not to rule on its counterclaim, because a finding of infringement on appeal would fulfil the condition (paragraph 7). That appeal, under Rule 220.1(a) RoP, is lodged conditionally on the patentee’s appeal: the regular fee is due only if that appeal is lodged, failing which the conditional appeal is deemed not to have been lodged (paragraph 8). On appeal the counterclaim remains conditional unless leave is given to drop the condition under Rules 263 and 222.2 RoP (paragraph 9), if infringement is found, the Court of Appeal will as a rule decide revocation itself rather than remit (paragraph 10, Art. 75(1) UPCA). As AorticLab did not appeal within the Rule 224.1(a) RoP period, the Court points to the possibility of re-establishment of rights under Rule 320 RoP (paragraphs 11 and 12).

Key points for practice

• A defendant whose counterclaim is conditional on infringement must, if the patentee appeals, lodge its own conditional appeal within the Rule 224.1(a) RoP period, or validity may not be examined on appeal (paragraphs 7, 8 and 11).
• Practical point: the conditional appeal attracts the fee only if the main appeal is lodged, making it an inexpensive precaution (paragraph 8).

Provisions applied

Agreement on a Unified Patent Court

Arts 65(2), 69(3) and 75(1)

Rules of Procedure

Rules 25, 220.1(a), 222.2, 224.1(a), 242.2(b), 263, 320 and 333.1

Related decisions

• Emboline v AorticLab, 13 January 2026, Munich Local Division decision under appeal.
• Emboline v AorticLab, 17 August 2026, later decision in the same 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.