Rule 263 – Leave to change claim or amend case

1. A party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including adding a counterclaim. Any such application shall explain why such change or amendment was not included in the original pleading.

2. Subject to paragraph 3, leave shall not be granted if, all circumstances considered, the party seeking the amendment cannot satisfy the Court that:

(a) the amendment in question could not have been made with reasonable diligence at an earlier stage; and

(b) the amendment will not unreasonably hinder the other party in the conduct of its action. 

3. Leave to limit a claim in an action unconditionally shall always be granted.

4. The Court may re-consider fees already paid in the light of an amendment.

Case Law:

Court of Appeal

IPPT20240219, UPC CoA, Netgear v Huawei
Leave to amend case by adding new patent (Rule 263 RoP). The principle of due process requires that, where a new patent is added to an action already pending, the defendant should have the same time to respond to the new patent - and, where appropriate, to bring an action for revocation - as it would have had if a new action had been brought in respect of that patent.  Extension of time limit for Statement of defense to 18 April 2024 (three months after Order of 18 January 2024) (IPPT20240118)

Court of First Instance

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. 

IPPT20240131, UPC CFI, CD Munich, Nanostring v Harvard

Front loaded proceedings and late filing (Rule 263 RoP) Parties are hereby informed that any applications to change their case will be duly considered – without prejudice to whether such applications will be granted or not – until 15 March 2024. Amendments introduced after that date will be presumed to be in violation of the requirements of Rule 263.2(a) RoP. Document filed by the Claimant with the Reply to the Defence to Revocation not disregarded as late-filed, but admitted; it was agreed that the Defendant would get the opportunity to respond to the submissions of the Claimant based on document D46 within 6 weeks after the date of the interim conference, in a written submission having a maximum of 10 pages. Defendant subsequently withdrew its objection. 

IPPT20240118, UPC CFI, LD Munich, Netgear v Huawei
Leave to amend the action to include claims of additional patent after the conclusion of limitation proceedings related thereto as granted by judge-rapporteur confirmed by the panel (Rule 263 RoP, Article 105a EPC). Rule 263 RoP leave to change claim or amend case is a procedural order to be made by the judge-rapporteur and subject to review by the panel (Rule 333 RoP and subsequent appeal (Rule 220 RoP). The request is unfounded. Assessment of the admissibility of the extension of the action is based solely on Rule 263 RoP and not on national law. The plaintiff could not reasonably be expected to assert the limited claims earlier before the conclusion of the limitation proceedings, also due to the risk of a further counterclaim for a declaration of invalidity of the second patent. In the context of the present proceedings or in the context of separate proceedings, the defendants must be granted the same time limits for their defence that would have been granted if they had filed a separate action, but no longer. 

IPPT20231211, UPC CFI, LD Munich, Huawei v Netgear - Leave

Leave to amend the case by including a second (related) patent (EP 3678321) (Rule 263 RoP). The requirements for a refusal of admission are not met. The court is convinced that the amendment in question could not have been made earlier with due diligence. If both patents are jointly managed within the same infringement proceedings, the court is obliged to grant the defendant largely the same defence options in relation to the second patent as in the case of a new, further action. This can be done by granting or extending deadlines for comments. In the case of separation of the subject matter of the extension of the action, this would even be simplified. The parties will be heard in a separate workflow on the question of whether the subject matter of the extension of the action can or should be separated.