Inherent Jurisdiction and Divisional Strategies: The Milan Central Division on Arrow Declarations
The Milan central division has confirmed that the Unified Patent Court possesses inherent jurisdiction to issue Arrow-type declarations and procedural orders. This order provides a defensive tool to prevent patentees from using divisional applications to evade final validity rulings.
The scope of jurisdiction under Article 32 UPCA has been a subject of intense procedural testing. While the competences in the Unified Patent Court Agreement are exhaustive, the Milan central division in UPC_CFI_2221/2026 has confirmed that this conferred jurisdiction carries the inherent procedural authority necessary to protect the integrity of proceedings. In a dispute concerning the diabetes treatment semaglutide, the panel addressed whether the Court can issue Arrow-type declarations and procedural orders to prevent a patent proprietor from using divisional applications to evade a final validity ruling.
Why did Sandoz seek declarations beyond the revocation of EP 3 689 365?
Sandoz AG brought a revocation action against Novo Nordisk A/S regarding EP 3 689 365, which claims a composition comprising semaglutide for treating type 2 diabetes. Alongside standard revocation requests, Sandoz introduced three additional requests aimed at preventing abusive divisional strategies. Sandoz sought an abstract declaration that the claimed composition lacked inventive step (Request 5), a declaration that future claims in the patent family covering the same subject-matter would lack inventive step (Request 6), and an order preventing Novo Nordisk from withdrawing its approval of the patent text at the European Patent Office under Article 113(2) EPC (Request 7). Novo Nordisk filed a preliminary objection under Rule 19 RoP, arguing the Court lacks inherent jurisdiction for such remedies.
How did the central division interpret its inherent jurisdiction under Article 32 UPCA?
The panel rejected the argument that the Unified Patent Court is strictly limited to the literal remedies named in the Agreement. Drawing on Article 42 UPCA, the Court held that it possesses the inherent procedural authority necessary to protect the effectiveness of proceedings properly heard before it. The panel noted that the right to file a divisional application is not conferred to circumvent or indefinitely postpone effective judicial determination of patent validity. The Court determined that its jurisdiction extends to conduct designed to circumvent its exercise, including the abusive use of divisional applications.
Why did the panel reject the abstract declaration of lack of inventive step for the composition?
Despite affirming its broad inherent powers, the Court declined jurisdiction over Request 5. Sandoz had asked for a declaration that the semaglutide composition itself lacked inventive step, independent of any specific patent right. The panel found that this request was not allowable in the broad and unspecified form in which it was framed. Because the request was directed to a composition rather than an identified patent, it failed to clearly identify the remedy sought and risked affecting the rights of third parties not involved in the proceedings.
How does Request 6 qualify as an admissible Arrow-type declaration?
In contrast, the panel affirmed its competence to hear Request 6. This request sought a declaration that any claim of a unitary patent or European patent in the same family, broad enough to cover the subject-matter of claims 1 to 5 of the patent in suit, would be invalid for lack of inventive step. The Court interpreted this as seeking to prevent the re-emergence through a divisional application of the same protective perimeter challenged in the revocation action. By defining the issue of inventive step concretely against the claims of the patent in suit, the request serves as an Arrow-type declaration providing commercial certainty.
What should practitioners adapt when facing divisional strategies after UPC_CFI_2221/2026?
This order provides a defensive tool for revocation claimants. Practitioners seeking to clear the way for a product should recognise that the Court may entertain Arrow-type relief, provided the request is tightly anchored to the claims of the patent in suit rather than an abstract technical concept. Claimants should formulate requests to target the specific protective perimeter of the challenged patent. Furthermore, the confirmation that the central division has autonomous jurisdiction to restrain a party from withdrawing its approval of the text under Article 113(2) EPC indicates claimants may petition the Court to restrain a proprietor's procedural conduct at the European Patent Office if it threatens a pending revocation action.