Rule 25 – Counterclaim for revocation

1. If the Statement of defence includes an assertion that the patent alleged to be infringed is invalid the Statement of defence shall include a Counterclaim against the proprietor of the patent for revocation of said patent in accordance with Rule 42. The Counterclaim for revocation shall contain:

(a) an indication of the extent to which revocation of the patent is requested;

(b) one or more grounds for revocation, which shall as far as possible be supported by arguments of law, and where appropriate an explanation of the defendant’s proposed claim construction;

(c) an indication of the facts relied on;

(d) the evidence relied on, where available, and an indication of any further evidence which will be offered in support;

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

(f) a statement of his position, if any, on the options provided for in Article 33(3) of the Agreement and Rule 37.4;

(g) a list of the documents, including any witness statements, referred to in the Counterclaim for revocation together with any request that all or part of any such documents need not be translated and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis; and

(h) insofar as the proprietor of the patent is not claimant in the infringement proceedings, the information required by Rule 13.1(b) and (d) in respect of said proprietor.

2. Where the claimant is not the proprietor or not the only proprietor of the patent concerned, the Registry shall as soon as practicable serve a copy of the Counterclaim for revocation on the relevant proprietor in accordance with Rule 13.1(e) and shall supply a copy of each document referred to in paragraph 1(h). Rule 271 shall apply mutatis mutandis. The proprietor in question shall become a party to the revocation proceedings and shall be treated as defendant in all subsequent proceedings. The proprietor shall provide details pursuant to Rule 13.1(e) if not already provided by the claimant.

Case Law:

Court of Appeal

IPPT20260421, UPC CoA, Merz v Viatris
CFI decision set aside: provisional measures granted. Invalidity defence in proceedings for provisional measures does not require a counterclaim for revocation and is not a separate action (R. 25.1 RoP, R. 205 RoP). Similarly, a waiver of an invalidity defence in proceedings for provisional measures is not an application to change the claim or amend the case in the meaning of R. 263 RoP, nor is it a withdrawal in the sense of R. 265 RoP.  

IPPT20251125, UPC CoA, Meril v Edwards
General principles regarding inventive step (Article 56 EPC). The burden and presentation of proof lies with the claimant in a revocation action (Art. 54 and 65(1) UPCA, R. 44(e)-(g), 25.1(b)-(d) RoP). Even though proof of certain facts, if contested, may be required, the assessment of the relevant facts and circumstances is a question of law. 

IPPT20250116, UPC CoA, Bhagat v Oerlikon
No suspensive effect of appeal justified (R. 223 RoP, R. 25 RoP) by (i) a judgement to be expected ‘very soon’ in parallel proceedings, to which Bhagat is not a (intervening) party, and (ii) an unsubstantiated statement that there are “considerable doubts” as to the validity of the patent while no counterclaim for revocation has been filed in the first instance 

Court of First Instance

IPPT20260311, UPC CFI, LD Munich, BFexaQC v NVIDIA
Conditional counterclaim for revocation allowed (R. 25 RoP). It is admissible in procedural terms for the Defendant to file a counterclaim for revocation in response to an infringement action, subject to the condition subsequent that the infringement action is unsuccessful. If this condition is met because the patent at issue is not infringed regardless of its validity, no decision is required on the counterclaim for revocation.

IPPT20260115, UPC CFI, LD Düsseldorf, Ona Patents v Google
The law prioritizes registration over the entitlement where a claimant wants to obtain a decision to remove the effects of a granted patent (Rule 8.6 RoP, Rule. 25 RoP) .  It is for the registered proprietor and the entitled proprietor to apply to the Court for the substitution of the registered proprietor in a situation of non-identity (Rule 42.2, 61.2 RoP). Different situation in a case of a counterclaim of revocation where entitlement of the registered person is effectively rebutted in the infringement action and the question of the entitlement is decisive for the infringement. 

IPPT20260303, UPC CFI, LD The Hague, ABM v Philips
Counterclaim action successful. Patent revoked in entirety for lack of novelty. (Article 54 EPC , Rule 25 RoP). The patent lacks novelty as Claim 1 of the patent is fully anticipated by prior art (JP748). Claim 1 of the Auxilliary Request is obvious, starting from the same prior art. The unamended dependent claims, cannot change this.  

IPPT20260205, UPC CFI, LD The Hague, Adeia Guides v Disney
Withdrawal of infringement action and counterclaim for revocation on parties reaching a settlement.  (Article 25 UPCA, Rule. 265.1 RoP, Rule 25 RoP) 

IPPT20260113, UPC CFI, LD Munich, Emboline v AorticLab
Admissible counterclaim for revocation subject to intra-procedural condition (only if the patent is found infringed) (R. 25 RoP). The unconditional transition from a counterclaim to a dependent counterclaim, which is dependent on the occurrence of an intra-procedural condition (i.e. a finding of patent infringement by the Court), means that the counterclaim is limited in accordance with Rule 263.3 of the Rules of Procedure (RoP). If, in accordance with the counterclaimant’s request, no decision is made on the Counterclaim, the counterclaimant must bear the costs for the counterclaim (Article 69(3) UPCA).

IPPT20251210, UPC CFI, LD Dusseldorf, MAS Maschinen v Altech
Substantiating of grounds for revocation (R. 25 RoP). If the applicant for a declaration of invalidity relies on a lack of inventive step to support their application, it is not sufficient merely to name the documents on which they base their challenge. Rather, it is for him to explain the disclosure content of the relevant documents and, furthermore, to set out specifically why and how a person skilled in the art would combine the individual documents and thus arrive at the claimed solution without exercising an inventive step. The defendant’s submissions do not meet this requirement. 

IPPT20251205, UPC CFI, LD Mannheim, Centripetal v Keysight Technologies
Infringement action dismissed due to insufficient substantiation by the Claimant. (Article 25 UPCA, Rule. 171 RoP). Inadmissible counterclaim for revocation subject to intra-procedural condition (finding of infringement) (Rule 25 RoP). It can be left open, whether this situation falls within the ambit of amendment or withdrawal (Rule 263 RoP or Rule 265 RoP.) The aspect of costs is not an interest in itself  (Article 69 UPCA), the costs of the Counterclaim for revocation on Defendants part are not to be borne by Claimant.

IPPT20251120, UPC CFI, CD Munich, Baussmann v Raimund Beck Nageltechnik
Patent partially revoked for lack of inventive step , to the extent it covers more than auxiliary request III, with claims 5 and 6 remaining unchanged. (Article 56 EPC, Rule 25 RoP, Rule 30 RoP). Scope of Revocation action : The plaintiff has not challenged claims 5 and 6 within the scope of the action for revocation. If the claimant in revocation action decides not to attack one or more claims of the patent as granted, the court and the defendant are bound to this scope of the action. 

IPPT20251128, UPC CFI, LD Munich, JingAo Solar v Chint
Late filed combination of documents D28 and D31 challenging inventive step (R. 25 RoP): Not in the Counterclaim for Revocation but in the Reply to the defence. Late filed arguments regarding D8. Not accepted on its own as a basis for a validity attack. According to the Counterclaim, the defendants still considered it necessary to combine D8 with D22 in order to demonstrate a lack of inventive step. Defendant’s argument regarding a combination of D8 and common general knowledge is not a response to claimant's submission.

IPPT20251105, UPC CFI, LD Hamburg, Dolle v Farko
Counterclaim for revocation unsuccessful, patent valid and infringed (Article 25 UPCA, Rule 25 RoP). No invalid claim of priority of the first application. (Article 87 EPC) . The term “the same invention” is to be interpreted as meaning that a claimed invention is to be regarded as the same invention as the invention in an earlier application if the person skilled in the art can derive the subject matter of the claim directly and unambiguously from the earlier application as a whole, using general technical knowledge.  (UPC_CoA_382/2024). The person skilled in the art can directly and unambiguously derive features 1.6 and 1.7 from the priority document, even if the features are not explicitly set forth in the priority document. The patent is novel over late filed prior art documents (Annexes NK 22 and 23) (Article 54 EPC) . Which were submitted after the expiration of the deadline. The expansion of the revocation claim to include late filed prior art documents constitutes an amendment under Rule 263 RoP. The burden of proof that neither the requirements of Rule 263(1) RoP nor the grounds for exclusion under Rule 263(2) RoP are met lies with the applicant. Based on this, there are doubts as to whether the defendants’ submissions justify the admission of this extension of the counterclaim despite the delay. 

IPPT20251010, UPC CFI, LD Munich, Motorola v Asustek
Counterclaim for revocation of a divisional patent succesful , on grounds of the invalidity of claims; infringement action dismissed. (Article 138 EPC , Rule 25 RoP, Article 25 UPCA). Inadmissible extension of the subject matter of claims 1 and 11. The parent application does not disclose, either explicitly or implicitly, the features of a first and second reconfiguration message as they appear cumulatively in claims 1 and 11. The essential feature of the patent is not found in claims 1 and 11, either literally or in essence.

IPPT20250813, UPC CFI, LD The Hague, Winnow v Orbisk
If the counter claimant seeks revocation of claims not asserted against it, and those claims are upheld, a compensation of costs is in order (Article 69 UPCA, R. 152 RoP).

IPPT20250728, UPC CFI, LD Munich, Papst Licensing v Roborock
Application for extension of time limits granted with plaintiff's consent and agreement that service on the other two parties would be accepted (R. 19 RoP, R. 23 RoP, R. 25 RoP)

IPPT20250508, UPC CFI, LD Düsseldorf, Grundfos v Hefei

Further invalidity objections – in terms of new prior art or new arguments based on already submitted prior art - introduced after the Counterclaim for revocation, constitute an amendment of the counterclaim for invalidity within the meaning of R. 263 RoP. (R. 9.2 RoP, R. 25 RoP, R. 29 RoP). Even if it can be assumed in favour of the defendant, even without an express request, that the introduction of further citations implicitly involves a request for the admission of the associated extension of the counterclaim for nullity, the defendant has not submitted any arguments which, according to R. 263(2) RoP could justify the admission of this extension of the counterclaim for annulment despite the delay. 

IPPT20250115, UPC CFI, LD Vienna, Swarco v Strabag
Invalidity objection (subject-matter extends beyond the application as filed, Article 123(2) EPC)) not addressed in terms of content since no counterclaim for revocation was filed (R. 25 RoP, R. 42 RoP).

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO
Given the interpretation of the patent claim (Article 69 EPC): The patent is valid, revocation dismissed. Left open whether document was capable of being taken into account. In principle, the revocation claimant is required to raise its attack already with the revocation counterclaim  (R. 25.1 RoP). 

IPPT20241010, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce - I
Claims brought against a plurality of defendants in one procedure (R. 303 RoP, R. 25.1 RoP) are to be treated as formally and substantively independent proceedings without the respective actions of one defendant having advantages or disadvantages for the other defendant. If individual defendants decide against filing a revocation counterclaim and the counterclaim is therefore expressly filed only by individual defendants, the validity argument is formally excluded for the defendants not involved in the revocation counterclaim. They cannot therefore successfully invoke the lack of validity in their proceedings. However, as long as the court refrains from separating the proceedings against several defendants, this has no practical effect.

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - I
A counterclaim for revocation against a registered proprietor (R. 8.6 RoP) who is not entitled to be registered as proprietor (R. 8.5 RoP) is not manifestly bound to fail (R. 361 RoP) (R. 42 RoP, R. 25 RoP). In the event the registered proprietor and the person entitled to be registered as proprietor are not the same, the registered proprietor must file an application under Rule 305.1(c) RP as soon as possible. According to this provision, the court may, at the request of a party, order that one person replace another.

IPPT20240221, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Claimants’ requests for a decision by default against the defendants in the main proceedings pursuant to Rule 355 (1)(a), 277 RoP and for a rejection of the Counterclaims for revocation is rejected. Time limits for filing the Statement of defence and the Counterclaim for revocation extended to 7 February 2024, as it was not possible to upload the Counterclaim for revocation on 6 February 2024 for internal technical reasons (Rule 9(3) RoP, Rule 25(1) RoP). Although the Statement of defence shall include a Counterclaim for revocation, the parties shall make use of the official forms available online (Rule 4(1) RoP). In practice, this means that the Counterclaim for revocation must also be filed in the workflow provided for this purpose by the CMS. Only when this requirement has been met is the Counterclaim for revocation properly filed. Where the defendant has filed a Statement of defence in due time in accordance with the requirements of Rule 25.1 RoP, the time limit for filing the Counterclaim for revocation in the dedicated workflow of the CMS may be extended retrospectively upon request (Rule 9.3 (a) RoP) and subject to the following conditions: Firstly, the defendant must have already made a first attempt to file the Counterclaim for revocation in due time in the workflow provided for this purpose before the expiry of the time limit. Secondly, the defendant must have uploaded the Counterclaim for revocation to the correct workflow without culpable delay after the expiry of the deadline.