UPC CFI CD Paris, 27 February 2024: Insufficient justification to change original request to amend the patent

15-03-2024 Print this page
IPPT20240227, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences


Subsequent request to change original request to amend the patent rejected because of insufficient justification  (Rule 30(2) RoP). 


Leave to change claim or amend case and application to amend patent can be filed simultaneously in one pleading, especially in a situation, where strict time periods come into play (Rule 263 RoP, Rule 30 RoP) in accordance with the principles of flexibility, fairness and equity, mentioned in the preamble 2, 4 and 5 of the Rules of Procedures, as well as of the principle of procedural efficiency. 


A request to replace the original application to amend the patent with a new set of amendments is not governed by Rule 263 RoP but falls under Rule 50(2) RoP and pursuant to Rule 30(2) RoP such a subsequent request requires the permission of the Court. 


Justification of a request to change the original request to amend the patent required in order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent (Rule 30(2) RoP). The development in Munich LD proceedings does not justify the subsequent request to amend the patent: not suitable to fulfil the declared purposes of consistency and procedural economy. 


Request to hear the revocation action together with the counterclaims in the Munich Local Division proceedings rejected (Rule 340(1) RoP). The application of that Rule does not appear to be actual, as no hearing seems to have been set in the two proceedings. 


Leave to appeal rejected (Article 73 UPCA, Rule 220 RoP). In the absence of any precedents from the UPC on the disputed issue, there is no concrete need for a ruling on the meaning of the relevant rules; In case of a possible immediate appeal to this order a decision by the Court of appeal may intervene after that the oral hearing in the current proceedings has taken place and, therefore, would be of no practical use to the parties.


IPPT20240227, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences