On October 22, 2026, the Milan Central Division of the Unified Patent Court (UPC) issued a procedural order in Sandoz v Novo Nordisk (UPC_CFI_2221/2026) addressing whether, and to what extent, the UPC may counter the so-called “divisional game“: the strategic use of divisional applications and patent surrender to avoid an adverse validity ruling while maintaining protection for substantially the same subject-matter.
The Court recognised potentially significant powers to preserve the effectiveness of its revocation proceedings, while rejecting an abstract declaration of obviousness. Importantly, however, the order concerns a preliminary objection to jurisdiction: the Court has not yet granted the substantive or protective relief sought.
1. Background: revocation proceedings and the divisional game
In revocation proceedings against Unitary Patent EP 3 689 365, which contains second medical use claims to semaglutide compositions for use in the prevention or treatment of type 2 diabetes administered parenterally once weekly at a dose of 1.0 mg, Sandoz sought revocation in its entirety principally for lack of inventive step and added matter.
In addition to that principal relief, Sandoz formulated three further requests (numbered 5, 6, and 7) to prevent Novo Nordisk from avoiding an adverse validity ruling by withdrawing the patent at the European Patent Office (EPO) while continuing to pursue substantially the same subject-matter through divisional applications. One such application, EP 4 406 593, was already pending.
Novo Nordisk raised a preliminary objection under Rule 19 of the Rules of Procedure (RoP), contending that these additional requests fell outside the competence and jurisdiction conferred by Article 32(1) of the Agreement on a Unified Patent Court (UPCA).
2. The Court’s approach to Sandoz’s requests
2.1 Request 5: no abstract declarations of obviousness
In Request 5, Sandoz asked for a declaration that the defined composition was obvious at the priority date, detached from any specific patent right or commercial product. The Court upheld the preliminary objection and declared Request 5 manifestly inadmissible in its present form, holding that the UPC lacks jurisdiction to issue abstract declarations on obviousness.
The Court distinguished this demand from an English Arrow declaration. In national practice, an Arrow declaration is directed to a claimant’s defined product, process, or proposed activity. Request 5, by contrast, sought an abstract declaration on patentability that could affect third-party rights without affording affected patentees an opportunity to be heard.
The Court therefore did not exclude Arrow-type relief as such, but rejected Sandoz’s broadly formulated request because it was not sufficiently tied to an identifiable right, product or commercial activity.
2.2 Request 6: Arrow-type relief against future divisionals
The Court reached a different conclusion on Request 6, which sought a declaration that any claim in the patent family of EP 3 689 365 broad enough to encompass the subject matter of claims 1 to 5 of the patent in suit would lack inventive step.
The Court characterised Request 6 as seeking Arrow-type relief aimed at preventing substantially the same patent protection from re-emerging through pending or future divisionals. Unlike Request 5, it considered this request sufficiently connected to the subject-matter of the pending revocation proceedings to fall within its jurisdiction, subject to further examination of its admissibility and merits.
The panel recognized that using divisional applications to duplicate proceedings and evade judicial scrutiny can constitute an abuse of rights. It stressed, however, that the filing of divisional applications is legitimate in itself. It is their potential use to frustrate judicial scrutiny while preserving substantially the same exclusionary effect that may amount to an abuse.
The judges affirmed that the Court possesses the inherent procedural authority necessary to protect the integrity and effectiveness of its revocation proceedings, in the event a patentee seeks to withdraw or eliminate the patent in suit to avoid an adverse decision while pursuing equivalent subject-matter in the same family. This authority is not a free-standing extension of UPC jurisdiction, but forms part of the powers implicit in the jurisdiction conferred by the UPCA.
To address this scenario, the central mechanism identified by the panel rests on Rule 360 RoP (“No need to adjudicate“). Under this rule, an action may be disposed of by order if the Court finds that the action has become devoid of purpose and that there is no longer any need to adjudicate on it.
The Court explained that a patentee’s tactical surrender of a patent, such as withdrawing consent to the patent text under Article 113(2) EPC, does not automatically deprive the action of purpose or terminate the Court’s jurisdiction. If the claimant retains a legitimate interest in clearing the way against pending divisionals containing substantially identical claims, the Court may decline to dispose of the proceedings and instead deliver a ruling on the merits.
Such a determination could have consequences forlater-granted divisionals, but would not automatically invalidate them. The Court emphasised that its findings would concern only claims reproducing or substantially corresponding to the subject-matter already adjudicated, and that any subsequent court would still have to assess the claims and circumstances of the divisional patent before it.
The Court also observed that, under Rule 206(3) and (4) RoP, a proprietor seeking inter partes provisional measures on a later-granted divisional would have to disclose an earlier UPC determination that substantially corresponding claims were invalid. This could significantly reduce the practical value of pursuing equivalent claims through divisionals following an adverse validity ruling.
Importantly, the Court’s reasoning concerning Request 6 was confined to divisionals remaining in the ownership of Novo Nordisk. It also acknowledged that third-party rights may require procedural safeguards, including under Rule 316 RoP.
2.3 Request 7: protective measures against patent surrender
The panel also dismissed Novo Nordisk’s preliminary objection against Request 7, in which Sandoz requested an order restraining the Pproprietor from withdrawing approval of the patent text at the EPO.
The Court affirmed that the Central Division possesses autonomous jurisdiction under Article 32(1)(b) and (d) UPCA to issue provisional and protective measures preserving the subject-matter of a pending revocation action. Grounding its reasoning in Article 32(1)(b) and (d) UPCA and the principle of effective judicial protection (guaranteed by Article 47 of the Charter of Fundamental Rights of the European Union), the panel reasoned that a division seized of a revocation action cannot be structurally incapable of preventing procedural steps taken elsewhere that would render its own revocation proceedings devoid of purpose.
Interestingly, the Court distinguished these protective powers from the jurisdiction to grant infringement-related provisional measures under Article 32(1)(c) UPCA. The measure sought would not be directed at preventing infringement, but at preserving the effectiveness of proceedings already pending before the Central Division.
The Court nevertheless stopped short of granting such an order. The merits and conditions of Request 7 (including urgency and proportionality) will be examined if and when Sandoz reformulates the request with concrete factual support, as the Court found that pointing to a pending divisional and a general reservation of procedural rights did not amount to unequivocal evidence that the proprietor was preparing to implement the divisional game.
The panel reserved the assessment of the merits and scope of Request 6 for the main proceedings. It also expressly found that the evidence did not establish misconduct by Novo Nordisk at this stage. Its observations on the divisional game were therefore made at a general, systematic level rather than on the basis of an established abuse in the proceedings.
3. Implications and open questions
While the Court expressly granted leave to appeal the order in its entirety, the order indicates that the UPC is prepared to prevent its revocation jurisdiction from being frustrated by the tactical withdrawal of contested patents, while substantially the same subject matter is then pursued through divisional applications.
The decision is particularly noteworthy for three reasons. First, it recognises the potential availability of Arrow-type relief within the UPC framework, albeit subject to important limitations. Second, it envisages the continuation of revocation proceedings notwithstanding the proprietor’s surrender of the patent. Third, it recognises the Central Division’s power to issue protective measures aimed at preventing such surrender where necessary to preserve the effectiveness of its proceedings.
At the same time, important questions remain. In particular, it remains to be seen how the Court will assess the admissibility and scope of Request 6, what factual circumstances will justify an order restraining patent surrender, and how an earlier validity determination will affect the enforcement of later-granted divisionals.
This concern also arises in EU competition enforcement. In late 2024, the European Commission fined Teva €462.6 million for abusing its dominant position by, among other things, strategically filing and withdrawing divisional patents to delay generic entry. That decision, which Teva has challenged before the General Court (Case T-19/25), illustrates the competition-law dimension of the divisional game.
Notably, the Milan Central Division itself referred to Article 42(2) UPCA, which requires UPC procedures and remedies to be applied fairly and equitably and without distorting competition. The Court nevertheless acknowledged that this provision does not confer jurisdiction over independent competition-law claims.
The Milan order thus reflects an increasing judicial awareness of the potential for strategic patent prosecution to undermine legal certainty and effective judicial protection. Whether its proposed mechanisms will offer a workable solution to the divisional game will depend on how they are applied in subsequent proceedings and, ultimately, on guidance from the UPC Court of Appeal.
