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

IPPT20250411, UPC CoA, Supponor v AIM Sport
Limited scope for review on appeal of a change or amendments of case (R. 263 RoP) or addition of a party (R. 305 RoP).  R. 263 RoP requires that the application shall explain why a requested change or amendment of case was not included in the original pleading. This means that the reasoning must be included in the application. It does not prohibit that the precise wording of the requested amendment is set out in one or more annexes, such as amended Statements of claim with and without tracked changes. 

IPPT20250214, UPC CoA, Abbott v Sibio
No leave to change claim for the first time in appeal to cover the territory of Ireland (R. 263.2(a) RoP). Such a request could reasonably have been made during the proceedings before the CFI, but Abbott explicitly chose not to do so. Justification cannot be found in the fact that the CFI – wrongly – considered Ireland to be a Contracting Member State and issued an injunction covering that territory in another action. 

IPPT20241223, UPC CoA, Microsoft v Suinno - II
A unconditional limitation of the damages claimed shall be regarded as an unconditional limitation of the claim  (R 263.3 RoP). 

IPPT20241121, UPC CoA, OrthoApnea
Not every new argument constitutes an “amendment of a case” (R. 263 RoP). An amendment of the case in the sense of R. 263 RoP only occurs when the nature and scope of the dispute changes such as through the introduction of a new patent or objection to a new product. A new basis for infringement (such as equivalence) merely concerns the extent of protection conferred under the art. 69 EPC and the corresponding protocol.

IPPT20240925, UPC CoA, Mammut v Ortovox

Leave to change claims or to amend case (R. 263 RoP) also applies to requests for interim measures

IPPT20240726, UPC CoA, OrthoApnea
Request for suspensive effect of appeal, regarding a decision not to extend a time period and to allow amendment of infringement claim with equivalency, admissible but unfounded (Art. 74(1) UPCA, Rule 223 RoP, Rule 263 RoP). Parties submit their statements in the written procedure without knowing how their allegations will be assessed by the Court of First Instance or the Court of Appeal. That entails the risk that part of their allegations will not be relevant for the outcome of the case.

IPPT20240726, UPC CoA, ICPillar v ARM
Request ICPillar for confidentiality of insurance policy rejected on 23 July 2024 (Rule 262A RoP). ARM given the opportunity to amend its Statement of response regarding the unredacted version of Exhibit 4 by 2 August 2024. (Rule 263 RoP). ICPillar not given an opportunity to amend its Statement and grounds of appeal. ICPillar could bring – and should have brought – forward arguments in its Statement of appeal and grounds of appeal based on the unredacted version of Exhibit 4 when lodging the appeal and request confidentiality in relation to that document together with uploading a redacted version of its Statement of claim and grounds of appeal, as it has done with Exhibit 4 itself.

IPPT20240726, UPC CoA, Abbott v Sibio
Allowability of auxiliary requests to be argued and decided at the oral hearing (Rule 263 RoP). In view thereof, time extension for Statement of response reasonable, also taking into account the summer holiday period (Rule 9 RoP, Rule 235 RoP).

IPPT20240604, UPC CoA, Daedalus v Xiaomi
Application to withdraw appeal in relation to two (Xiaomi DE and Xiaomi NL) of several defendants rejected (Rule 265 RoP). Rule 263.3 RoP is not applicable to withdrawal of an appeal against respondents in appeal proceedings since it allows for a an unconditional limitation of a claim in an action, while the present withdrawal is a matter of limiting not the claim but the respondents in the appeal proceedings.

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

IPPT20250606, UPC CFI, LD Mannheim, Dish v Aylo
Amendments to corrective measures of the Statement of claim are not objectionable as such (R. 263 RoP, R. 30 RoP). Alternative infringement claims taking into account amendments of the patent (R. 30 RoP) do not constitute an amendment within the meaning of R. 263 RoP, but merely clarify that the plaintiff also seeks a lesser extent of relief in the event that the patent in suit is partially revoked in accordance with the request for amendment of the patent. Insofar as the request for amendment of the patent pursuant to R. 30 RoP is admissible, the consequential amendments to the infringement action are therefore also admissible. Left open whether assertion of equivalent patent infringement following the statement of claim constitutes a change to the grounds for the action or otherwise constitutes an amendment to the action within the meaning of R. 263 RoP. In any case, such an amendment to the action would be permissible in the present case. The amendment could not have been made earlier with the required care (R. 263.2 (a) RoP). It is a response to the arguments put forward in the statements of defence. The application for a declaratory judgment made in the oral hearing is not admissible as an extension of the action, R. 263.1, .2 (a) RoP. According to the system of the EPGÜ, the determination of patent infringement (Art. 64 (2) (a) UPCA) is one of the remedies under Art. 64 UPCA, which are particularly available in addition to the claim for injunctive relief (Art. 63 UPCA). It is independent of the existence of a claim for injunctive relief. 

IPPT20250407, UPC CFI, LD Milan, Dainese v Alpinestars
Leave to limit a claim unconditionally, which shall always be granted (R. 263.3 RoP) applies both in cases where a) the claimant limits the relief sought (petitum), for example by reducing the relief sought (e.g. injunction or damages); and b) the claimant limits the cause of action (causa petendi), for example after starting the proceedings to protect a plurality of patents, then it renounces one of them. Differently from rule 265 RoP (withdrawal), rule 263 RoP does not provide the regulation of the proceeding costs, because the proceedings continue against the defendant in relation to other claims. This solution doesn’t go against the "losing party bears the costs" principle, established by Article 69 UPCA: indeed, the unconditional limitation requested by the claimant will be considered by the Court regulating the costs decision.

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
Amendment of patent and of request in infringement action (R. 30 RoP, R. 263 RoP, R. 265 RoP). Auxiliary requests in reply to statement of defence with regard to infringement action are covered by R. 30 RoP without necessity to formally apply for leave to change the claim or amend the case in accordance with R. 263 RoP. R. 263 RoP does not address amendments of original requests for the infringement action from the original main claim to the original auxiliary request as the new main request, which relates to the mere wording only, not to the substantive content of the request. Even if one considered the transition to be a partial withdrawal of the statement of claim in the meaning of R. 265 RoP, such partial withdrawal would have to be granted under R. 265 RoP. An amendment in response to concerns raised by the Court does not constitute a change or amendment in the meaning of R. 263 RoP if the lack of specificity and the amendment responding to it concern the wording only but not the content of the request. Even if the lack of specificity and the amendment concerned the substance of the requests, it would serve the purpose of removing a potential lack of substantive specificity only after having been addressed by the court. Such amendment would have to be admissible under R. 263 RoP on a regular basis if it does not unduly hinder the defence of defendant. 

IPPT20250331, UPC CFI, LD Munich, Jingao v Chint
Leave to change claim following amendment of patent in opposition proceedings (R. 263 RoP, R. 30 RoP). Rule 30 RoP not restricted to amendments directly related to the grounds for invalidity asserted in the counterclaim for revocation, but may also not be directly related to the grounds for invalidity arising from the counterclaim. If dependent patent claims are made the subject of auxiliary requests within an application it must also be possible for the patentee to make corresponding amendments with regard to the infringement action. Synchronisation proceedings before the UPC with those before the EPO can only work if it is possible to introduce claim versions amended by the EPO into (infringement) proceedings before the UPC (R. 295(a) RoP, R. 30 RoP)

IPPT20250317, UPC CFI, LD Munich, Edwards v Meril
Edwards' request for protection of confidential information in application for a cost decision granted (R. 262.2 RoP). Leave to amend the request for protection of confidential information pursuant to R. 262A RoP is granted (Rule 263.3 RoP)

IPPT20250307, UPC CFI, LD Düsseldorf, Tridonic v Cupower
Patent valid but not infringed. New validity attacks raised during the oral proceedings not taken into consideration. If considered as an amendment of claim, the attacks should have been raised at the latest in the reply to the counterclaim ((R. 263 RoP). If considered as additional argumentation for the annulment of the contested patent, it must be rejected pursuant to R. 9.2 VerfO. Strategic manoeuvring aimed at achieving a surprise effect is as foreign to the rules of procedure as is the introduction of completely new means of attack on the basis of a merely preliminary assessment by the court at the beginning of the oral hearing, especially since this is not uniform in the UPC. 

IPPT20250228, UPC CFI, LD Munich, Esko v XSYS
Application to add The Netherlands to the list of countries for which a declaration of infringement is requested rejected a late filed (R. 263.2(a) RoP). It would have been possible to request the inclusion of the Netherlands in the action by mid-December 2024 instead of 17 January 2025

IPPT20250211, UPC CFI, LD Helsinki, AIM Sport v Supponor
Rule 263 RoP application allowed after appeal but prior to filing of Statement of Defence. Amendments to the case must be explained in R. 263 application but can be detailed in an appendix. Adding new defendant and adding Germany and Spain allowed: procedural economy and aim to avoid the risk of irreconcilable and inconsistent decisions favours allowing adding a party at this stage. The latter also concerns situations should the case be initiated in another court and hence favours the acceptance of a new party. (R. 305 RoP). Unconventional situation, were the case re-starts and the front loaded nature of UPC procedure is protected.

IPPT20250124, UPC CFI, LD Munich, Headwater v Samsung
Leave to change claim of amend case granted (R. 263 RoP) pending a further review of the reasons for Samsung to late file some invalidity arguments. If the late filed arguments are accepted Headwater has already been given a chance to comment and to amend pleadings. If the late filed arguments are rejected no harm has been caused by allowing the amendments. This issue will be further discussed in the Interim Conference scheduled for 28 February 2025.

IPPT20250121, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Admissibility of late filed assertions and late filed evidentiary documents (R. 263 RoP, R. 32 RoP). The documents introduced by the claimant in the reply to defence to revocation – including the declaration released by […] and the documents referred to in that statement – are admissible, given that they contain arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by defendant in its defence to revocation and the evidence […] filed in support of these latter arguments. The admissibility of these late filed documents shall also extend to arguments that, while not constituting a direct response to the defendant’s arguments, are closely related to them. Individual line of arguments to use the combination of ‘Pan’ with either ‘Duke’, ‘Tucker’ or ‘CAS’ considered late filed as it was not raised in the statement for revocation, but only in the reply to the defence and hence must be disregarded.

IPPT20241230, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi
Requests to be decided by the judge-rapporteur or the panel. Procedural economy: request to amend the action based on a request to amend the patent  (R. 30 RoP, R. 263 RoP, R. 334(h) RoP))
The Judge-Rapporteur must keep in mind the principle of procedural economy not only with regard to the parties, but also as a representative for the bench as a whole. In the interests of procedural economy, it is not normally necessary, outside the standardised cases of opposition under Rule 19 RoP, for the panel to decide, in the context of a preliminary ruling under Rule 334 (h) RoP, on questions of substantial significance for the decision on the merits, such as the substantive admissibility of five requests for amendment of the action (R. 263 RoP), which are based on a request for amendment of the patent (R. 30 RoP). Substantive decisions of this scope are regularly to be left to the main proceedings, namely the oral proceedings, in particular the final decision by the panel.

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Admissible later filed documents (R. 44 RoP, R. 263 RoP) The documents introduced by the Claimants in the Reply to defence to revocation (Exhibits KAP D06, KAP D16 – D26) and the documents introduced by the Defendant in the Rejoinder to the Reply to defence to revocation (Exhibits BB16 – BB27) are admissible, given that they contain arguments regarding the common general knowledge and the claim interpretation which were advanced in their respective initial written pleadings and are intended to contrast and react to the arguments raised by the opposing party. 

IPPT20241220, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Leave to amend (R. 263 RoP, R. 105(5) RoP): respective claims in infringement action and counterclaim to add Romania as wished by both parties; details of the way in which the information is to be provided by the defendants, the request falls under Rule 13 RoP. 

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
Claimant in revocation action cannot introduce new grounds of invalidity or introduce new documents considered novelty destroying or affecting inventive step in subsequent written acts (R. 44 RoP, R. 263 RoP). Similarly, the claimant must specify in the statement of claim the facts that it considers necessary to prove in order to succeed in its claim, together with the relevant evidence. However, following the defence raised, the  the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court.

PPT20241202, UPC CFI, LD Munich, Heraeus v Vibrantz
Panel review: Change of claim to include Romania allowed (R. 263 RoP, R. 333 RoP).Change of claim to include Romania allowed (R. 263 RoP). The two extensions of the action shall be allowed because both parties have requested that the question of infringement and validity concerning Romania also be heard and decided. Amendment of claim to include process claim allowed: does not constitute a change of claim within the meaning of Rule 263 RoP. This is because, following the example of the Court of Appeal, no other patent is being asserted. The infringement allegation regarding the same product is merely supported by an additional patent claim. Accordingly, only Rule 13 in conjunction with point 7 of the preamble and Rule 9.2 Rules of Procedure are to be examined.

IPPT20241126, UPC CFI, CD Paris, Microsoft v Suinno
Unconditional reduction of damages sought in an infringement action is a limitation of the claim that must be granted (R. 263(3) RoP) if it is filed with due explanation and unconditionally and irrespective of the subjective intention underlying the application. No re-considering of already paid fees on an application lacking substantive argumentation
 

IPPT20241122, UPC CFI, CD Milan, Insulet v Eoflow
 Amendments of the patent are subject to Rule 30 RoP. Rule 263 RoP refers only to amendments to pleadings. Auxiliary request to amend the patent pursuant to Rule 30.2 RoP is not admissible in the proceedings for provisional measures.

IPPT20241011, UPC CFI, LD Paris, Dexcom v Abbott
No leave granted to ABBOTT to amend case to cover new version of ABBOTT application (R. 263 RoP). Justified that ABBOTT could not have disclosed commercially sensitive information about  the launch of a new product to its competitor DEXCOM. The Amendment will unreasonably hinder DEXCOM in the conduct of is action given that the oral hearing is in ten days time and it put DEXCOM in a situation where it would not be able to appropriately prepare for the oral hearing due to the new scope of the litigation. ABBOTT may also be able to prove that its new version of the app does not infringe the patent at issue at the time of enforcement if infringement measures are ordered in the present case. 

IPPT20241007, UPC CFI, RD Nordic-Baltic, Abbott v Dexcom
Order following interim conference (R. 105 RoP). Request to change claim dismissed (R. 263 RoP). Request should have been in the application, not in an annex; changes asked are not mere corrections, could have been formulated earlier and extend the scope of the injunction. No need for alternative claims as the Court may grant the relief in full or in part as requested (Article 76.1 UPCA). 

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - II
Leave to change claim granted following judgment of the Bundespatentgericht of 7 May 2024, except for claim II.2, which is not related thereto and could have been asserted as early as 12 March 2024 (R. 263 RoP). The amendment to the action almost three months later is no longer within the bounds of due diligence and must therefore be rejected. This also applies with regard to the subsequent claims referring to it. The plaintiff is free to assert these claims by filing a separate action.

IPPT20240924, UPC CFI, LD Paris, IGB v Unilever
Amended claims do not constitute change of claims (R. 263 RoP). No substantial amendments, which are of such a nature as to alter and prejudice the subject matter of the dispute and its scope, and relate only to the arrangements for implementing and enforcing any judgment.

IPPT20240917, UPC CFI, LD The Hague, Abbott v Dexcom-I
Leave to amend counter claim for revocation and response to amended claim allowed (R. 263 RoP). At the time of the Statement of defence including a counter claim Abbott’s withdrawal of the claims against the G7-System with G7-Receiver could not yet be envisaged

IPPT20240906, UPC CFI, LD Munich, Edwards Lifesciences v Meril
Leave to unconditionally limit claim and new auxiliary claim equal to the previous main claim (Rule 263.3 RoP). 

IPPT20240823, UPC CFI, LD Lisbon, Ericsson v Asustek
Leave for an unconditional limitation of the scope of the initial claim (Rule 263(3) RoP). Defendant Arvato should no longer be considered to be infringing according to Art. 25(a) UPCA, but regarded as an intermediary according to Art. 62(1) UPCA, whose services are used by the other Defendants to infringe the Patent.

IPPT20240806, UPC CFI, LD Munich, Motorola v Ericsson
Leave to change claim rejected (Rule 263(2)(a) RoP). If either condition is not met, the court's discretion is reduced to zero and it must refuse the application.The applications for injunctive relief and further corrective measures, i.e. recall, permanent removal and destruction of the allegedly infringing embodiments, could, with reasonable diligence, have been brought earlier than 06/05/2024. The statement of claim was served on the defendants on 17/02/2024. Therefore, the application for amendment could and should have been filed by mid-February at the latest. As this is a clear-cut case leave to appeal is not granted (Rule 220(2) RoP).

IPPT20240802, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
An amendment of an application for amendment of a patent is not governed by Rule 263 RoP but to be classified as a subsequent request to amend the patent within the meaning of Rule 30(2) RoP, which is admissible only with the permission of the Court

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).

IPPT20240514, UPC CFI, LD Düsseldorf, Dolby v HP
Leave to unconditionally limit the claim in action granted (Rule 263(3) RoP): The present action does not assert any claims against the realisation of the claimed teaching of the patent-in-suit by graphics cards of the NVIDIA Cooperation and/or companies affiliated with it.

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.