Territorial Carve-Outs and the Boundaries of Claim Limitation: Two Orders from Brussels
The Brussels Local Division clarifies the procedural mechanics of dropping a national designation from a pending action. Two coordinated orders explain why limiting a claim does not automatically trigger a formal withdrawal or immediate cost awards.
Navigating parallel national and Unified Patent Court litigation often requires tactical retreats, such as dropping a specific national designation from a broader infringement claim to consolidate a localized dispute. When a patentee carves out the United Kingdom portion of their case, the local subsidiaries sued solely for acts in that territory are suddenly left without any allegations against them. The immediate instinct of defence counsel is to demand a formal withdrawal, immediate dismissal, and an upfront cost award.
The territorial carve-out and the procedural clash
This exact scenario unfolded before the Brussels Local Division in two coordinated orders issued on the same day: an infringement action in UPC-CFI-1357/2025 and a counterclaim for revocation in UPC-CFI-629/2026. The dispute concerned the patent EP 3 107 487 B1, asserted by Establishment Labs S.A. against a large group of GC Aesthetics corporate entities.
Following the initiation of parallel revocation proceedings in the UK by a related GC Aesthetics company, the claimant sought to unconditionally limit its UPC claim by withdrawing the UK portion of its infringement action. The claimant filed this request under Rule 263.3 RoP. As a direct result of this territorial limitation, no infringement allegations remained against two specific entities: Nagor Limited and Global Consolidated Aesthetics (UK) Limited.
The defendants seized on this procedural shift. They argued that dropping all claims against specific defendants should be treated as a formal withdrawal of the action under Rule 265 RoP. On that basis, they demanded an immediate dismissal, an upfront cost award of up to EUR 61,000, and prospective restrictions enjoining the claimant from filing future UPC claims regarding the UK designation.
Disentangling limitation from withdrawal
The panel, with Judge-Rapporteur Samuel Granata presiding, firmly rejected the defendants' attempt to recharacterize the procedural step. The distinction between changing a claim and withdrawing an action proved legally significant.
The Court held that Rule 263.3 RoP is not constructed in such a way that limiting an action would automatically imply the application of Rule 265 RoP (reasons 10). Even though the limitation directly impacted the legal standing of two defendants who no longer faced allegations, the broader infringement action itself was not withdrawn in its entirety. Because the application of Rule 265 RoP necessitates a formal application as a procedural step, which the claimant never undertook, the withdrawal mechanism was inapplicable.
The Rule 361 RoP mechanism and delayed costs
Having established that the action was not withdrawn, the panel had to address the awkward status of the two UK defendants who were now participating in a lawsuit devoid of allegations against them. The Court turned to Rule 361 RoP, which governs actions manifestly bound to fail.
The panel found it clear-cut that by limiting its claims on a territorial basis, the claimant had no legal basis to oblige the two UK entities to remain part of the infringement proceedings. Consequently, the Court declared that the infringement action in part lacks any foundation in law regarding the requests formulated against those specific defendants (reasons 13).
However, this finding did not yield the immediate financial relief the defendants sought. The panel noted that Rule 361 RoP does not oblige the Court to decide on costs immediately. Because all thirteen defendants were represented by the same legal team, the Court found that making a separate, isolated costs decision for just two defendants would be impractical and not in line with procedural efficiency. The two UK entities are therefore obliged to remain part of the proceedings solely for the final cost assessment.
Parallel proceedings and the counterclaim
The defendants also alleged procedural abuse, pointing to the claimant's shifting positions in the parallel UK litigation. The panel dismissed these allegations entirely. The chronology showed that a related GC Aesthetics company had initiated the UK proceedings first. The claimant's decision to drop the UK portion of the UPC claim to avoid duplicative litigation was deemed a logical step, not a delay tactic. The Court refused to impose prospective restrictions on future claims, noting that doing so would disproportionately limit the patentee's fundamental right of access to justice.
In the parallel counterclaim for revocation (UPC-CFI-629/2026), the defendants responded to the claimant's retreat by requesting to drop their own invalidity attacks against the UK designation. The Court treated this mirroring request as an application under Rule 263.3 RoP and granted the limitation accordingly.
Practical implications
These coordinated orders provide a clear procedural roadmap for territorial carve-outs in multi-defendant UPC litigation. Practitioners must recognize that dropping a national designation is an unconditional claim limitation under Rule 263.3 RoP, not a partial withdrawal of the action under Rule 265 RoP.
Crucially, defence counsel cannot force an immediate, piecemeal cost decision simply because their specific client has been cleared of all allegations mid-suit. When multiple corporate entities share the same representatives, the Court will prioritize procedural efficiency over the immediate financial closure of individual defendants. The panel openly acknowledged the impractical consequence of keeping cleared defendants on the docket, but concluded that a minor administrative delay does not outweigh the efficiency of a single, consolidated cost proceeding at the conclusion of the main action.