Malikie v Discord (UPC_CFI_79/2025)
Decision date:
29 July 2025
Osborne Clarke summary
- Malikie brought infringement proceedings against Discord. Discord filed a request pursuant to Rules 361 and 362 RoP alongside their defence and counterclaim for revocation. In their request, they argued that Malikie's infringement claim should be barred in relation to the German part of their patent due to a failure to comply with s 25 of the German Patent Act (GPA).
- Section 25 of the GPA requires that patentees that are not based in Germany must have appointed an authorised lawyer or patent attorney before they can participate in proceedings in front of the German Patent and Trade Mark Office or Federal Patent Court.
- The Mannheim LD dismissed Discord's request, finding that s 25 is not applicable to proceedings before the UPC because it merely constitutes a procedural provision for actions in front of the German courts. Given that the UPC is designed to have its own procedural framework, it held that this rule should not be applied in this case and the request should be dismissed. In any event, the Mannheim LD stated that even if s 25 were applicable, the requirements of Rules 361 and 362 RoP would not be met. This would constitute a procedural defect that the patentee would be allowed to correct.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.