FUJIFILM V. KODAK – UPC COURT OF APPEAL DECISION OF JULY 13, 2026

I. Introduction and Background

The UPC Court of Appeal (CoA) continues to shape the framework for patent validity proceedings – procedurally and in substance. In its recent decision (Fujifilm v. Kodak, UPC_CoA_473/2025 et al., July 13, 2026), the CoA further refined the law governing applications to amend patents under Rule 30 RoP while reaffirming the fundamental principle that a patent should not be revoked beyond the extent justified by the established grounds of invalidity (Article 65(3) UPCA; Article 138(2) EPC).

Since the UPC became operational, its case law has progressively clarified the obligations imposed on patentees seeking to preserve their patents against revocation. Early decisions of the Local and Central Divisions established a somewhat formalistic approach in that Applications to Amend the patent under Rule 30 RoP must be fully substantiated and accompanied by complete sets of amended claims. Subsequent decisions, most notably Microsoft v. Suinno (CD Paris, UPC_CFI_433/2024, January 7, 2026), further developed this framework by holding that, as a general rule, while the mere deletion of claims may not necessitate a consolidated document, any substantive amendment requires the patentee to submit a full set of the amended claims. With reference to the principle of judicial neutrality, the Court was considered to be prohibited from assisting the patentee in drafting or clarifying amendments. Consequently, the proposed amendments were to be immediately intelligible to the Court and the Revocation Claimant without requiring subjective reconstruction of the patentee’s intent, ensuring the accuracy of subsequent annotations in the official patent registers.

Against this evolving procedural backdrop, the CoA’s decision of July 13, 2026, in Fujifilm v. Kodak addresses the question whether a patentee must file an Application to Amend the patent under Rule 30 RoP where it defends combinations of independent and dependent claims.

II. The CoA’s reasoning

At first instance, the Mannheim Local Division held that a Defence to a Counterclaim for Revocation was inadmissible with respect to dependent claims defended separately by the patentee because the patentee had not filed an Application to Amend the patent under Rule 30 RoP for that purpose.

The CoA based its decision on several principles and provisions of UPC law and the EPC.

First, both the UPCA and the EPC reflect the general principle that a patent should not be revoked in its entirety if it is only partially invalid (Article 65(3) UPCA; Article 138(2) EPC).

Second, the Court is not required to assess the validity of each and every dependent claim of its own motion; rather, its assessment is based on the parties’ submissions and requests. In that regard, Rule 29A(a)–(c) RoP merely requires that the Defence to a Counterclaim for Revocation sets out why any dependent claim, or any combination of dependent claims, is independently valid.

Third, the CoA further held that Rule 30 RoP does not require the filing of auxiliary requests in order to defend dependent claims, or combinations of dependent claims, as granted. The wording of Rule 30.1(b) RoP itself confirms that it does not apply to dependent claims as granted, since it requires the patentee to explain compliance with the requirements of Article 84 and Article 123(2) and (3) EPC. Those requirements have already been examined during the examination proceedings before the EPO in relation to the granted dependent claims.

1. Defence of dependent claims as granted

The CoA therefore held that the patentee is not required to submit an auxiliary request as a precondition for defending dependent claims as granted, including combinations of dependent claims that are encompassed by the claims as granted. The requirements set out in Rule 30 RoP do not apply. However, the patentee must identify, in a sufficiently substantiated manner, which dependent claims it considers valid in the event that the independent claim is found invalid.

This also applies to combinations of dependent claims that do not follow directly and specifically from the wording of the claims (“non-obvious combinations”), for example where a dependent claim refers to several, or any, preceding claims. In such cases, the patentee must clearly indicate which combinations are said to be valid.

The Court linked this requirement to the patentee’s interest in maintaining the patent, which can be recognized only to the extent that the patentee defends the patent in a sufficiently substantiated manner.

2. Defence of dependent claims in amended form not encompassed by the claims as granted

The position is different where the patentee seeks to maintain the patent in amended wording that departs from the granted claims, or proposes combinations of dependent claims not expressly contained in the claims as granted. In such cases, the CoA requires the patentee, on the basis of Rule 30 RoP, to file an auxiliary request as a prerequisite for relying on those new claim formulations.

III. Takeaways

At first sight, the framework established by the CoA appears favorable for patentees. However, they cannot rely solely on the granted claims but are also required to substantiate the validity of these claims. Taken as a whole, the CoA has laid the foundations for a balanced and less formalistic system. Nonetheless, further questions will inevitably arise from this.

1. For Patentees

• Rule 30 RoP application not mandatory, but…

The patentee may defend granted dependent claims and combinations encompassed by the granted dependency structure without a Rule 30 RoP application and filing auxiliary requests – restrictions apply, though:

– The defence must be substantiated regarding each respective dependent claim.

– “Non-obvious” combinations must be expressly identified in the language of the patent.

– The number of combinations must be reasonable.

– An explicit ranking is advisable – unless indicated differently by the patentee, the Court follows the order (numbering) of the claims.

– Exhibits with alternative claim sets add clarity.

• What to request:

– A request to dismiss the counterclaim “in its entirety” preserves all granted claims; the Court must uphold a partially valid patent in limited form without a separate application.

– Once an independent claim or a combination is found to be valid, the Court does not decide on the validity of the respective (remaining) dependent claims due to lack of legal interest on the part of the Revocation Claimant.

– Separate application under Rule 30 RoP, if applicable (see below).

• When to file a Rule 30 RoP application:

– If the claim amendments result in a deviation from the wording of the claims as granted, or

– If the proposed combinations of dependent claims is not explicitly included in the claims as granted and limit the scope of the patent as granted.

• Limitation before the EPO?

– A central limitation at the EPO (Articles 105a, 105b(2) EPC) during pending UPC proceedings – even on appeal – is not contrary to due process, at least, in case the limited claim is already within the scope of the proceedings.

2. For Revocation Claimants / Defendants in Infringement Actions

• Scope of the attack:

– Even in Counterclaim proceedings, the Revocation Claimant may attack the patent at issue “in its entirety”. No limitation applies to the claims asserted in the Infringement Action.

• Substantiation:

– An attack on the patent “in its entirety” obliges the Revocation Claimant to substantiate invalidity for each claim – and to bear the resulting workload;

• Front-loaded system, but…

– The Statement for Revocation may focus on the independent claim(s) and subject matter added by claims dependent thereon;

– Combinations defended by the patentee may be addressed by the Revocation Claimant in the Reply.

3. What remains to be seen

• Does a Rule 30 RoP application provide for a “safe harbor” to introduce combinations?
• Are statements by the parties in a Rule 30-Reply or Rule 30-Rejoinder late-filed if the Court finds that Rule 30 RoP does not apply regarding respective combinations?
• Is the number of combinations and Auxiliary Requests under Rule 30 RoP (still) reasonable?
• How to sort dependent claims, combinations and Rule 30 RoP requests in order to ensure that the Court assesses infringed claims first?

Side-note: With the focus of the article being on the validity side of UPC Proceedings, the CoA’s clarification on its inventive step approach shall not be disregarded: Hereafter, an obviousness attack based on a combination of documents requires a pointer rooted in the starting document plus common general knowledge (CGK). The Revocation Claimant shall substantiate CGK beyond patent citations.

Matters of infringement, private prior use and jurisdiction shall be disregarded per the focus of this article.