Rule 13 – Contents of the Statement of claim

1. The claimant shall lodge a Statement of claim with the division chosen by him [Article 33 of the Agreement] which shall contain:

(a) the name of the claimant, and, where the claimant is a corporate entity, the location of its registered office, and of the claimant’s representative;

(b) the name of the party against whom the Statement is made (the defendant), and, where the defendant is a corporate entity, the location of its registered office;

(c) postal and electronic addresses for service on the claimant and the names of the persons authorised to accept service;

(d) postal and, where available, electronic addresses for service on the defendant and the names of the persons authorised to accept service, if known;

(e) where the claimant is not the proprietor or not the only proprietor of the patent concerned, postal and where available, electronic addresses for service on the proprietor and the names and addresses of the persons authorised to accept service, if known;

(f) where the claimant is not the proprietor of the patent concerned, or not the only proprietor, evidence to show the claimant is entitled to commence proceedings [Article 47(2) and (3) of the Agreement];

(g) details of the patent concerned, including the number;

(h) where applicable, information about any prior or pending proceedings relating to the patent concerned before the Court including any action for revocation or a declaration of non-infringement pending before the central division and the date of any such action, the European Patent Office or any other court or authority;

(i) an indication of the division which shall hear the action [Article 33(1) to (6) of the Agreement] with an explanation of why that division has competence; where the parties have agreed in accordance with Article 33(7) of the Agreement, the indication of the division which shall hear the action shall be accompanied by evidence of the defendant’s agreement;

(j) where applicable, an indication that the action shall be heard by a single judge [Article 8(7) of the Agreement], accompanied by evidence of the defendant’s agreement;

(k) the nature of the claim, the order or the remedy sought by the claimant;

(l) an indication of the facts relied on, in particular:

   (i) one or more instances of alleged infringements or threatened infringements specifying the date and place of each;

    (ii) the identification of the patent claims alleged to be infringed;

(m) the evidence relied on [Rule 170.1], where available, and an indication of any further evidence which will be offered in support;

(n) the reasons why the facts relied on constitute an infringement of the patent claims, including arguments of law and where appropriate an explanation of the proposed claim interpretation;

(o) an indication of any order the claimant will seek during the interim procedure [Rule 104(e)];

(p) where the claimant assesses that the value of the infringement action exceeds EUR 500.000, an indication of the value; and

(q) a list of the documents, including any witness statements, referred to in the Statement of claim, together with any request that all or part of any such document need not be translated and/or any request pursuant to Rule 262.2 or Rule 262A.

2. The claimant shall at the same time supply a copy of each of the documents referred to in the Statement of claim.

3. The judge-rapporteur shall decide on any request made pursuant to paragraph 1(q) as soon as practicable after his designation pursuant to Rule 18.

Case law

Court of Appeal

IPPT20241121, UPC CoA, OrthoApnea
Not every new argument constitutes an “amendment of a case” (R. 263 RoP). If a new argument is not an amendment of the case, the CFI has discretion regarding a violation of the obligation under R. 13 RoP to set out the case as early as possible. R. 13 RoP sets limitations on what arguments may be raised after the Statement of claim because parties are required to set out their cases as early as possible. The CFI has discretion to hold that new argumentation does not violate R. 13 RoP.

IPPT20240918, UPC CoA, Volkswagen v NST

Deficiencies in the Statement of claim (R. 13 RoP) can be corrected. Claims and arguments may be further substantiated at a later stage of the main proceedings. This may in particular be the case when the claimant, after having made an argument in its Statement of claim, further substantiates this argument in the Reply to the Statement of defence its Statement (R. 29(a) or (b) RoP). Even though the UPC procedure is a front-loaded system, it is not required that the claimant envisage every possible line of defence and include all arguments, facts and evidence in, and submits it with, the Statement of claim and that nothing could ever be added thereafter. A Statement of claim (R. 13 RoP) that sets out in detail why one infringing embodiment, that is taken as an example, infringes the patent and that includes a list setting out further embodiments with a similar structure that are infringing for (essentially) the same reasons, does not with respect to the embodiments included in that list result in an action that is manifestly lacking any foundation in law as meant in R. 361 RoP). It remains to be seen what the approach of the UPC in this respect shall be, which is a matter to be dealt with in the main proceedings (and possibly followed by appeal proceedings). 

IPPT20231013, UPC CoA, Amgen v Sanofi-Aventis
Valid date of service of statement of claim with Annexes (Rule 271 RoP). A Statement of claim, even if it refers to or announces the later submission of Annexes, can be validly served on a defendant, provided that the Statement of claim without the Annexes enables the defendant to assert its rights in legal proceedings before the courts of the UPC. A Statement of claim must therefore at least state with certainty the subject matter and cause of action. Only annexes that are indispensable for the understanding of the subject matter and the cause of action must be served (and where necessary translated) on a defendant, together with the Statement of claim. Extension of terms for Preliminary objections and Statement of defense because of unavailability of Annexes (Rules 13, 19 and 23 RoP). If a claimant did not upload the Annexes simultaneously with the Statement of claim in the CMS, and thus did not comply with Rule 13.2, and as a consequence these have not been available when the representative of the defendant accessed the CMS with the Access Code contained in the Notice, this in itself is sufficient to constitute a reasoned request by a defendant for an extension of the terms mentioned in Rules 19.1 and 23 RoP for lodging a Preliminary objection and the Statement of defense, regardless of the nature and/or content of the Annexes. Failing any specific circumstances of an individual case which calls for another term, which have to be brought forward by the claimant, the extension of the terms mentioned in Rules 19.1 and 23 shall compensate for and thus be equal to the period during which the Annexes have not been available after service of the Statement of claim contrary to Rule 13.2 RoP..

Court of First Instance

IPPT20240916, UPC CFI, CD Paris, Microsoft v Suinno - I
Requesting “the Court to determine and award past damages” is a sufficiently clear indication of the remedy sought with the infringement action and the fact that the damages asked is not indicate in a specific amount does not render the claim generic and does not constitute a violation of the requirement set by Rule 13(1)(k) RoP.

IPPT20240816, UPC CFI, LD Lisbon, Ericsson v Asustek
The Statement of claim requirement to provide “information about any prior or pending proceedings relating to the patent concerned” of Rule 13.1(h) RoP specifically serves the purpose to limit the risk of contradictory decision and lis pendens situations, which can formally be avoided based on the requirements to inform the UPC of prior or pending proceedings relating to the patent concerned before the case is attributed to a panel. The Court further notes that, in case of a possible ex parte proceedings, R. 206.4 RoP demands even higher requirements – any pending proceedings and/or any unsuccessful attempt in the past to obtain provisional measures in respect of the patent. Rule 13.1(h) RoP requires only information, not any kind of Annexes or evidence.

IPPT20230719, UPC CFI, LD Brussels, OrthoApnea
Amending infringement claim with equivalence arguments after receiving defendant’s defense in line with procedural evolutive course of the dispute and does not affect subject matter of the proceedings (Rule 263 RoP, Rule 13 RoP).

IPPT20230708, UPC CFI, LD Brussels, OrthoApnea
Amendment of case in Statement of Reply in response to the Statement of Defence with new facts, infringement arguments (equivalence) and claim permitted (Rule 263 RoP, Rule 13 RoP): consistent with the normative purpose of R. 13 RoP and, fitting into the procedurally-evolutive course of a judicial dispute. Deadline extension for Rejoinder to Statement of Reply with 2 weeks proportionate, reasonable and equitable (Rule 9(3)(a) RoP, Rule 29)(c) RoP). Extended period does not affect Claimant's rights, nor does it affect the further procedural calendar already determined in this case (specifically, the dates of the interim conference and pleading date). 

IPPT20240702, UPC CFI, CD Paris, Microsoft v Suinno
Request rejected to declare the infringement action manifestly inadmissible (Rule 361 RoP) because (a) the claimant was not duly represented according to Article 48 of the Unified Patent Court Agreement (‘UPCA’) and Rule 8 (1) ‘RoP’ or (b) the content of the statement of claim was insufficient, as it lacked the requirements provided for by Rule 13 (1) (k) ‘RoP’. On the statement of claim being insufficiently concrete and specific not meeting the requirements set forth by Rule 13 (1) (k) ‘RoP’. The relief sought by the claimant is an injunction to the defendant to cease and desist the importation and sales of the alleged infringing embodiment in some specific national markets. […] the ‘nature’ of the order of the remedy sought is clearly indicated. The same can be said with regard to claimant’s request to determine and award past damages with interest. Indeed, in the statement of claim the claimant assumes ‘April 2019 and later years in Finland, Germany, and France for the period of infringement’. Therefore, the period of the infringement appears to be determined in a sufficient clear manner.

IPPT20240627, UPC CFI, LD Mannheim, Panasonic v Orope
Case management order. The following information and questions have been sent to the parties by the judge-rapporteur in order to structure the further proceedings (Article 43 UPCA, Rule 9(1) RoP, Rule 101(1) RoP). In case of technically complex subject-matter statements on the interpretation of features of the asserted patent claim which are not readily understandable by themselves must already be made in the statement of claim (Rule 13(1)(n) RoP). Here: Location of reference signals for determining the uplink channel quality in an available transmission bandwidth to avoid interference with control channels in the context of LTE standardisation.

IPPT20240527, UPC CFI, LD Munich, NEC V TCL
Extension of deadlines to file Statement of Defence: wrong Annexes were provided with the Statement of Claim; non-compliance with Rule 13.2 RoP.

IPPT20240508, UPC CFI, LD Munich, Volkswagen et al. v NST

At this stage a detailed infringement outline and mapping of features for only one specific device by way of example is sufficient (Rule 13(n) RoP). At a later stage, it would be sufficient to show that this “infringement read” actually applies in the same way to all other devices included in a given list of infringing embodiments, if and to the extent that the infringement will be actually assessed. 

IPPT20230829, UPC CFI, LD Munich, Amgen v Sanofi-Aventis
Service of Statement of claim (Rule 13 RoP, Rule 271 RoP). Pursuant to Rule 13 of the Rules of Procedure, an action can be validly filed and served without annexes if the submission of these annexes is merely announced at a later date in the statement of claim.The requirement to grant the defendant a sufficient right to be heard, also with regard to attachments submitted at a later date, may need to be met by fine-tuning the time limit regime.