UPC, Milan Central Division: the importance of selecting invalidity attacks
By its decision of 23 October 2025 in the joined cases between bioMérieux and Labrador Diagnostics concerning unitary patent EP 3 756 767 B1 (joined cases UPC_CFI_497/2024 and UPC_CFI_571/2024), the Milan Central Division of the Unified Patent Court (UPC) has provided significant guidance on how the parties’ submissions should be organised in revocation proceedings.
bioMérieux had brought an action for revocation of Labrador’s patent both by way of a main action and by way of counterclaim in an infringement action, and the two revocation claims had subsequently ben joined. The patent emerges from the proceedings upheld in amended form, namely in the version of Labrador’s third auxiliary request. Labrador is therefore regarded as the substantially successful party and is awarded reimbursement of a significant portion of its legal costs.
The most relevant aspect from a procedural standpoint concerns the management of the number of invalidity attacks. bioMérieux’s case was in fact built on some fifty different attacks against the patent, including objections of lack of novelty, lack of inventive step, added matter and insufficiency. The Court makes clear that such an approach is not compatible with the requirements of efficiency and expedition which underpin the UPC system, and accordingly invites the claimant to select those attacks it considers the strongest and to rank them in order of importance.
The consequence is significant: once the attacks so selected are found to be unfounded, the Court considers it justified not to proceed to an examination of the remaining attacks, which it treats as less likely to succeed. This places substantial responsibility on the parties as regards the selection and prioritisation of their objections: a high number of attacks is not treated as an advantage, but is expressly regarded as a sign of lack of strategy.
The decision then recalls a number of well-established principles on claim interpretation and on the assessment of patent validity, and clarifies in particular that, in order to assess whether or not a claimed invention was obvious to a person skilled in the art, the Court may rely on the problem-solution approach used by the EPO as a tool for assessing obviousness, but nothing prevents the Court from following a different approach. It also confirms that the claimant cannot introduce new challenges for the first time during the oral hearing.
Finally, the decision addresses certain non-negligible economic and procedural aspects. The two revocation actions joined in these proceedings are treated as a single action for the purpose of determining the overall value in dispute and, consequently, the ceiling for recoverable legal costs (€600,000). Within this maximum, Labrador, as the predominantly successful party, is awarded an amount of €400,000.
Labrador’s request to keep that amount confidential is, however, rejected: in the Court’s view, the mere indication of the figure does not, in itself, disclose commercially or strategically sensitive information sufficient to justify confidentiality measures.
