Patent disputes are typically resolved in civil courts by their very nature. However, a recent case in Germany demonstrates that this is not always the case, as abusing procedural rules of an international court like the Unified Patent Court (UPC) can result in criminal prosecution.
Before addressing the core of the case, it is important to outline specific aspects of the UPC and the transitional period surrounding its establishment. Once the context of the UPC is clarified and the background to the case explained, we can then focus on the substance of the case and examine how the German courts concluded that Polytech and its director had used fraudulent methods to prevent Silimed from initiating proceedings against them before the UPC.
Background on the UPC and its transitional establishment period
The UPC is a European court with exclusive jurisdiction over disputes concerning the unitary patent (or patent with unitary effect), established simultaneously. This court does not only handle unitary patents; it also has jurisdiction over all disputes relating to European patents, including those validated in the traditional manner (i.e., individually in each country). To help patent holders adapt to this new court, a transitional period of seven years (which may be extended) has been provided, during which they can, via an ‘opt-out’ request, choose to retain the old system for their conventional European patent and remain subject to the jurisdiction of national courts. This decision is, of course, reversible through an ‘opt-in’ request.
Nevertheless, if litigation related to a traditional European patent with an ‘opt-out’ occurs before a national court, that patent is permanently excluded from the jurisdiction of the UPC. It is this mechanism, under Article 83 of the UPC Agreement, that is particularly significant in this case.
For more information on ‘opt-out’ and ‘opt-in’, please feel free to consult the dedicated article we published.
Background: Patent protection for stolen technology
Silimed and Polytech had previously collaborated. After their agreement was terminated, Polytech applied for a European patent (EP2581193) in its own name, which Silimed claims as its own. Following several years of legal proceedings, the German courts ultimately recognised Silimed’s claim and ordered the transfer of the patent.
This is where the UPC becomes significant. Before the patent was officially transferred, Polytech submitted an ‘opt-out’ request to the UPC, thereby removing the patent from its jurisdiction. This manoeuvre was clearly intended to prevent Silimed from initiating an infringement action against Polytech before the UPC, and to pre-empt any comprehensive action against it by this new court.
Having become the rightful owner, Silimed naturally had the option to file an ‘opt-in’ application. However, before acting, an action for revocation was conveniently brought against the German part of the European patent before the German Federal Patent Court. This action, in accordance with Article 83 of the UPC Agreement, therefore definitively removes the patent, which Silimed had struggled to recover, from the jurisdiction of the UPC, as confirmed by the decision of its local division in Hamburg.
It should be noted that the revocation action before the German Federal Patent Court was not initiated by Polytech but by its holding company, PTH&A Management.
From the ‘front man’ to the arrest
On this basis, Silimed subsequently returned to the Munich Regional Court – which had previously ordered the transfer of the patent – to assert its rights regarding the patent in question.
The court was not fooled and described this invalidity action as a ‘straw man’ manoeuvre. Since the holding company and Polytech shared the same address and directors, the court found it obvious that Polytech was behind this invalidity action. While Polytech argued that a decision preventing such an invalidity action would amount to an ‘injunction prohibiting legal proceedings,’ the court determined that the invalidity action was an abusive manoeuvre aimed solely at stopping Silimed from initiating proceedings before the UPC, as shown by the chronological sequence between the opt-out application and the invalidity action.
As Polytech continued its abusive tactics to prevent Silimed from peacefully using its patent, the Munich Regional Court’s response was unprecedented: an arrest warrant against Polytech’s managing director.
Why such severity? The court considered that a fine (capped at €250,000 under German law) would be a mere trifle for Polytech, whose monthly profits from the disputed products are eight times higher. Paying the fine would amount to nothing more than ‘operating costs’ for the company. To be effective, the penalty therefore had to be personal and coercive: imprisonment for contempt of court.
Finally, the Munich court stated that the arrest warrant will be lifted once Polytech withdraws its invalidity action against Silimed’s European patent and confirms that it will no longer contest Silimed’s withdrawal of its “opt-out.” Meanwhile, Silimed may still appeal the decision of the local division of the JUB. We will, of course, keep you informed of any further developments.
Conclusion
The Silimed v. Polytech case will be remembered as a significant warning. It shows that the UPC and the national courts, far from being in conflict, form a consistent system where attempts at procedural manipulation are strongly punished.
The lessons to be learned from this are as follows:
- The ‘opt-out’ is a powerful but double-edged strategic tool that requires careful consideration. It is essential to assess the potential reactions of the opposing party before choosing to opt out and withdraw a patent from the unified system, as this could limit your ability to take comprehensive and effective action across Europe.
- Using an entity associated with a company, considering the known links, will inevitably be seen by a court as an abusive manoeuvre. One might wonder if employing an unrelated third party for such an action could have helped Polytech avoid this outcome.
- The personal liability of directors. In matters of intellectual property, it is often assumed that the risks are confined to the company itself. However, when injunctions are breached in a ‘particularly flagrant’ manner and fines are ineffective, the personal liberty of directors may be at risk, as is the case here.
For our clients, the message is clear: patent strategy goes beyond just filing and technical defence. It demands a comprehensive and strategic approach to legal risks, where procedural ethics and compliance with injunctions are as important as the patent’s validity. In an increasingly interconnected legal landscape, transparency and good faith are the best safeguards. Not to mention the quality of advice you receive.
Sources: JUVE Patent, ‘Munich Court orders arrest for Polytech general manager’, 2 June 2026; Decision of the Hamburg Local Division of the JUB (UPC-CFI-481/2026); Article 83 of the Agreement on a Unified Patent Court.