The UPC's first decision on claim construction has relied on the prosecution history – be (even more) careful what you say and do before the EPO...

7 minute read
19 January 2024

Shortly before the end of the year, the Munich Local Division issued its decision in SES-Imagotag SA v Hanshow Technology Co. Ltd, denying SES's application for a preliminary injunction relying on their European patent EP 3,883,277 ("EP'277"). The decision is of note as it is the first time the Unified Patents Court (UPC) has considered its approach to claim construction.

In what might be a surprise for practitioners in certain jurisdictions (including the UK and Germany), the Munich Local Division considered the prosecution history and the amendments made to the claims as filed as an aid to construing the granted claims. What's more, the decision raises interesting questions on the sources of law that will be applied by different local divisions and the potential impact this might have on harmonisation, and also highlights the continuing issue of the lack of transparency of UPC judgments.

In this article, we take a look at how the UPC approached the issue of claim construction, why they did so and what companies should consider when looking to assert patents before the new court.

Case summary

SES requested a preliminary injunction (PI) against Hanshow, citing infringement of EP'277. In response, Hanshow denied infringement and challenged validity.

The court sided with Hanshow, denying SES's request for a PI on the basis they were not convinced Hanshow were infringing the patent. In reaching this decision, the court considered how certain features of claim 1 of EP'277 should be interpreted.

The claim related to an electronic label that included a printed circuit board (PCB) and antenna. The PCB was housed in a case "on the side of the back of the case" and the antenna was disposed on or in the case "on the side of the front of said electronic label". In the allegedly infringing product, a substantial part of the antenna rested on the rear side of the case.

How did the court construe the claims?

To aid their interpretation of the granted claims, the court looked to the wording of the claims as originally filed and to the amendments made in prosecution.

The original wording of the claim stated that the PCB and antenna were at a distance from each other. During prosecution, this feature was replaced by the wording specifying that the PCB was on the side of the back of the case and the antenna was on the side of the front of the electronic label. The court used this finding (along with the technical teaching described in the description) to construe the claim as meaning the PCB and antenna were opposed to each other.

Because the antenna of the allegedly infringing product was at least in part resting on the rear side of the case, the court found it could not also be on the side of the front of the electronic label as required by claim 1 and so no infringement was found.

The court therefore looked at the original form of a claim limitation and its subsequent prosecution history to aid its interpretation of the limitation as it appeared in the granted claims.

What was the legal basis?

The UPC Agreement (UPCA) does not say anything on how claims are to be interpreted or construed. However, Article 24 lists the sources of law the UPC shall base its decisions on, which includes the European Patent Convention (EPC) and national law.

Unfortunately the judgment does not state the source of law for using the prosecution history as an aid to claim interpretation. No such provision appears within the EPC, however, leading to an assumption that the legal basis came from national law. But from which Member State, and which legal provisions in particular? Absent an explanation in the judgment, it is not possible to say. Despite being a judgment from the Munich Local Division, historically the German courts have refrained from using the prosecution history to guide claim interpretation. However, the legally qualified judge on this case is a patent judge at the District Court of The Hague, a court that has in the past used the prosecution history in claim construction. Perhaps, then, Dutch national law was being applied in this case. If this is the case then it would seem that it is not just the location of the local division hearing the case but the identity of the judges that has the potential to influence the law which will be applied to individual UPC decisions.

Will all local divisions construe claims this way?

Achieving complete legal harmonisation was always going to be difficult for a supranational court composed of many different courts located in different jurisdictions and led by judges of differing legal backgrounds.

If judges are (understandably) more inclined to apply provisions from their own national law, it is difficult to see a uniform adoption of the use of prosecution history as an aid to claim interpretation throughout the UPC. Absent any input from the Court of Appeal, this could give rise to a lack of harmonisation on this point in the future. In this regard, it will be interesting to see whether SES file an appeal.


The first decision of the UPC that considers the issue of claim construction has provided a somewhat surprising result, particularly so given the local division that issued the decision is located in a jurisdiction (Germany) that has historically interpreted claims without recourse to the prosecution history. Though only one case, the decision illustrates the potential influence the panel of judges has on national law provisions that might be applied to underpin any legal analysis. If this indeed turns out to be a more general trend, then forum shopping will become a more difficult, or at least uncertain, task for applicants before the UPC given that they have no influence over who the judges appointed to their cases will be. This, of course, also means that predicting the outcome of any given case becomes more uncertain.

Predicting the wider impact of this case is made more difficult by the absence of any explanation of which legal provisions were applied by the court to support their claim construction and why. This is unfortunate, particularly when the law in this area is nascent, and is arguably a further example of the problems caused by a lack of transparency surrounding UPC judgments.

In the meantime, companies looking to assert their patents before the UPC would be wise to review the prosecution history for amendments that have the potential to adversely affect the construction of their claims.

If you have any questions about this article, please contact Arnie Francis or Alex Brodie.

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