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10 Apr 2026

UPC Claim Construction: What South African Practitioners and Clients Should Know

The Unified Patent Court (UPC) has changed European patent litigation from a set of national contests into a single high-stakes forum in many cases.

For South African practitioners and clients who file through the EPO, this is significant since claim construction now affects both pan-European enforcement and pan-European revocation.

During the transitional period (until 31 May 2030), conventional European patents may still be litigated nationally or opt out of the UPC. However, once you have opted in, you cannot opt out of Unitary Patents.

 

UPC claim construction

Under the UPC, claim construction is anchored in Article 69 EPC and its Protocol. The claims determine the extent of protection, while the description and drawings are used to interpret the claims.

Early jurisprudence of the Unified Patent Court is beginning to crystallise a distinct and influential approach to claim construction.

In 10x Genomics v NanoString, the Court of Appeal specified that the claim is the decisive basis for scope, but that construction is not purely literal and that the description and drawings are always explanatory aids. Furthermore, the decision in VusionGroup v Hanshow, the Court added that a feature must be read in light of the claim as a whole and from the viewpoint of the skilled addressee. In SharkNinja v Dyson, the UPC confirmed that the same construction principles apply to both infringement and validity.

Two simple examples can illustrate the practical significance of these principles. First, suppose a claim refers to a “fastening element”, while the specification depicts only screws. In such a situation, the UPC is unlikely to limit the claim to screws only, unless the claim language or the broader context clearly requires such a narrow reading. In this case, a competitor cannot safely assume that replacing a screw with, for example, a clip, rivet, or clamp will necessarily avoid infringement if the claim has been drafted in sufficiently general terms.

Secondly, consider a patentee who argues that a “control module” should be interpreted broadly enough to cover both hardware and software implementations. That broader interpretation may assist the patentee when defending infringement, as it widens the range of products or systems that may fall within the claim. However, the same breadth will then be tested against the prior art during validity assessment. Stated otherwise, a patentee who seeks a very broad construction runs the risk that the claim may become vulnerable for want of novelty or inventive step. Therefore, a balance is to be struck between capturing the invention broadly whilst avoiding the risk of inviting prior art that is not relevant to the patent in question to invalidate it.

The UPC therefore makes it much harder for a party to argue for a broad construction in support of infringement, while contending for a narrower construction in support of validity in the same case.

 

What does this mean for Patent Practitioners?

Firstly, discipline is at the order of the day as European specifications should support commercially useful breadth without repeatedly describing one embodiment as “the invention”. You may always protect alternative embodiments in dependent claims and exemplify them with additional examples and pertinent use claims. By doing so, you will retain critical fallback positions.

Secondly, when prosecuting patents, amendments, and arguments at the EPO, the later UPC construction should be in mind. Statements made during EPO prosecution may later bind the patentee and limit the scope of the claims.

Thirdly, for conventional European patents, patent practitioners should discuss opt-out early and patent by patent, especially where the patent is commercially important but vulnerable to a central revocation attack.

Under the UPC, claim construction is no longer a flexible litigation tool. It is a single, unified framework that simultaneously determines infringement and validity across multiple jurisdictions.

 

The UPC is a double-edged sword: Should you opt in or out?

The UPC offers clear advantages: a single infringement action, a single validity contest, and a single set of remedies across 18 participating EU states, which is attractive for products sold widely in Europe.

In addition, the EPO has reported that a Unitary Patent is less expensive than a conventional European patent validated and maintained in four participating states, and becomes more attractive as the number of countries of commercial interest increases. Thus, if you have a strong patent covering a product sold across several European markets, a Unitary Patent may be an efficient and commercially powerful option for participating UPC territories. That said, the UPC does not cover all commercially relevant jurisdictions in Europe. In many cases, important markets such as the United Kingdom, Spain, Poland, Switzerland, and Turkey may still need to be addressed through classical validations alongside the Unitary Patent.

Unfortunately, a Unitary Patent is a double-edged sword. The same advantage of central enforcement also allows for streamlined central revocation. If the patent fails, it may fail across the UPC territory in a single action. Most importantly, a Unitary Patent cannot be opted out of the UPC, and the system still does not replace separate planning for non-participating markets.

As a rule of thumb, strong patents with clean drafting and broad commercial relevance are good candidates. In contrast, weaker or marginal patents and those in a crowded technology domain are advised to take a more cautious route through a conventional European patent and, where appropriate, an opt-out.

The implications of the UPC are not to be treated as a mere post-grant litigation option. Instead, it should be critically considered from the outset during prosecution and portfolio management. If carefully considered, the UPC can be a major commercial advantage, but when ignored, it can magnify drafting weaknesses and portfolio risk.

 

References

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Tim Laurens
Senior Associate
Patent Attorney
+27 11 324 3107
TimL@kisch-ip.com

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