Rule 29 – Lodging of Defence to the Counterclaim for revocation, Reply to the Statement of defence and Rejoinder to the Reply

(a) Within two months of service of a Statement of defence which includes a Counterclaim for revocation, the claimant shall lodge a Defence to the Counterclaim for revocation together with any Reply to the Statement of defence and any Application to amend the patent pursuant to Rule 30, if applicable.

(b) Within two months of service of a Statement of defence which does not include a Counterclaim for revocation, the claimant may lodge a Reply to the Statement of defence.

(c) Within one month of service of a Reply to the Statement of defence which does not include a Counterclaim for revocation the defendant may lodge a Rejoinder to the Reply to the Statement of defence. The Rejoinder to the Reply to the Statement of defence shall be limited to a response to the matters raised in the Reply to the Statement of defence.

(d) Within two months of service of the Defence to Counterclaim the defendant may lodge a Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence and any Defence to an Application to amend the patent pursuant to Rule 32, if applicable.

(e) Within one month of the service of the Reply to the Defence to the Counterclaim, the claimant may lodge a Rejoinder to the Reply together with any Reply to the Defence to an Application to amend the patent pursuant to Rule 32, if applicable. The Rejoinder to the Reply to the Statement of defence shall be limited to a response to the matters raised in the Reply to the Statement of defence.

(f) Where the claimant is not the proprietor of the patent, all references to the claimant in this Rule 29 regarding an Application to amend the patent shall be read as including the proprietor.

Case Law:

Court of Appeal

IPPT20260602, UPC CoA, Kodak v Fujifilm 
Front Loaded Proceedings (Rule 29(c) RoP, R. 263 RoP). It is not contrary to the lodging of a Rejoinder to the Reply to the Statement of defence. or the front loaded system of the RoP if a party submits additional evidence of an already stated fact or submitted argument for which other evidence had already been submitted, but which was disputed by the other party. 

IPPT20260428, UPC CoA, Optopol v Topcon
Request for discretionary review by Court of Appeal dismissed of retroactive extension of time period for lodging Reply (R. 220.3 RoP, R. 29(a) RoP, R. 9.3(a) RoP). Impugned order not manifestly incorrect. The LD dismissed the application for re-establishment of rights pursuant to R. 320 RoP and used its discretion to retroactively extend the time period for lodging the Reply based on R. 9.3(a) RoP. The LD did not exceed its discretionary powers in coming to this decision. Understandable and reasonable finding of excusable human error based on conclusion that a system of checks had been put into place within the representatives’ law firm and that despite this system, the deadline was missed by a human error, in particular by the assistant of Respondent’s representatives incorrectly noting the prescribed time period in the system on which the Respondent’s representatives relied. Moreover, when exercising its discretion, the LD correctly considered that the extension of the time period would not cause any delay in the proceedings.

IPPT20240930, UPC CoA, Xiaomi v Panasonic
No discretionary review (R. 220.3 RoP) of refusal by Court of First Instance to grant leave to appeal of partial rejection of request for an extension of two months’ time limit (R. 29(d) RoP) by judge-rapporteur and panel (R. 333 RoP). The period by which a court extends a time limit in a particular case is at the court's discretion.

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. 

First Instance

IPPT20260212, UPC CFI, LD Mannheim, Honeywell v Sovex
Rejection of preliminary objections confirmed by panel (R. 19 RoP, R. 333 RoP). R. 20(1) RoP does not require that a defendant has to be given another opportunity to be heard.  Moreover, the Defendants were able to present their arguments in their application for review.

IPPT20250908, UPC CFI, CD Munich, TCL v Corning
No extension of deadline by 2 weeks for filing the Reply to Defence to Revocation, including an Application to amend the patent because of tests being conducted (R. 9.3 RoP, R. 29(a) RoP)
 

IPPT20250901, UPC LD Munich, KNAPP v Becton Dickinson
Extension of time limit for Defence to the Counterclaim for revocation and Reply to the Statement of defence (R. 29(a) RoP). Not as agreed between the parties (9 September 2025) but only until 5 September, to avoid a conflict with the preparation of the interim hearing.

IPPT20250819, UPC CFI, LD The Hague, Adeia v Disney
Deadline extension due to late filed exhibits for filing claimant’s rejoinder to defendant’s reply to the defence in the counter claim for revocation as well as claimant’s reply to defendant’s defence in the application to amend, begin on 5 August 2025. (R. 29 RoP)

IPPT20250813, UPC CFI, LD The Hague, Genevant v Moderna
Limited extension for filing Reply to statement of defence and Statement of defence to counterclaim for revocation (R. 9.3 RoP, R. 29(a) RoP, R. 262A RoP). In view of the circumstances of this case, the date of the uploading of the agreement of the party regarding a confidentiality club, shall be taken as the start date for the two month time period. A limited extension for filing the Reply/SoDCfR will thus be granted until 24 September 2025. A  further extension until 4 October 2025 as requested, is not justified.

IPPT20250801, UPC CFI, LD Paris, NJ Diffusion v Gisela Mayer
No late filed claim of infringement by equivalence in Statement of reply (R. 29 RoP) as this claim does not change the nature of the claimant's procedural strategy, which merely adapts it in light of the arguments put forward by GM in its defence, and the defendant was able to respond to it in its rejoinder. 

IPPT20250723, UPC CFI, LD Düsseldorf, Qiagen v bioMérieux
Time period for lodging Reply to the Statement of defence and Defence to the counterclaim extended  because of unavailability of redacted versions (R. 9.3 RoP, R. 29(a) RoP)

IPPT20250721, UPC CFI, LD Mannheim, Malikie Innovations v Discord
Extension of time period for the Defence to Counterclaim for revocation rejected (R. 29 RoP). The time period does not commence before the claimant had been able to take note of the CCR in substance.

IPPT20250716, UPC CFI, LD Mannheim, Fingon v Samsung
Time periods for filing the rejoinder in the infringement proceedings and the reply in the counterclaim for revocation proceedings are extended (R. 9.3 RoP). Special circumstances justifying an extension: plausible that the Defendants need information from the third party developer about said functionalities and the support of a private expert, and that they need time, after having received the information from the developer and the opinion of their private expert (who may take said information into account), to finalize their rejoinder in the infringement proceedings

IPPT20250702, UPC CFI, LD Mannheim, Corning v Hisense
Extension of time period for filing the Reply to the Statement of defence and the Defence to the counterclaim because of establishing confidentiality club (R. 29(a) RoP, R. 262A RoP) to compensate for the period during which a party of the proceedings does not have full access to the subject matter of the case for the purpose of pursuing its patent rights.

IPPT20250627, UPC CFI, LD Mannheim, Centripal v Palo Alto
The time period for Defendant’s rejoinder in the infringement proceedings, its reply to the defence to the counterclaim for revocation and its defence against the application to amend the patent is extended with two weeks extended until 14 July 2025 (R. 29 RoP) due to unforeseen international flight restrictions due to events of the last two weeks regarding Israel

IPPT20250605, UPC CFI, LD Mannheim, Fingon v Samsung
Case management (R. 334 RoP. R. 9 RoP). The decision on the request to exclude the impugned submissions from consideration is postponed until after the oral hearing, and thus transferred to the panel. There is no amendment to the case. Not every new argument constitutes an “amendment of a case” requiring a party to apply for leave under R. 263 RoP. Defendants’ request to extend the time period pursuant to R. 29 (d) RoP is dismissed.

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. 

IPPT20250508, UPC CFI, LD Mannheim, Polidoro v Bekaert

Extension of time period for the Claimant’s Reply to the Statement of defence, the Defence to the Counterclaim for revocation and an Application to amend the patent until 19 May 2025 since access to unredacted version of the Statement of defence was delayed because of setting up of confidentiality club regime (R. 29 RoP, R. 30 RoP, R. 262A RoP)

IPPT20250428, UPC CFI, LD Hamburg, Nera v Xiaomi

Application rejected for disregarding statements in point 15 of plaintiff’s reply of 10 march 2025 as late filed (R. 9.2 RoP, Rule 29(a) RoP, Rule 30 RoP. Plaintiff has satisfied the requirements of Rule 29 and 30 RoP in its response to the counterclaim and request for amendment of the patent dated 7 November 2024, which is why the supplementary explanations in the plaintiff's reply dated 10 March 2025 cannot be rejected as belated. The auxiliary requests 19/19A and 22/22A are therefore not new auxiliary requests which, according to Rule 30.2 VerfO, would require the court's approval

IPPT20250424, UPC CFI, LD Düsseldorf, Rädlinger v Henle

Extension of time period from 28 May 2025 until 16 June 2025 for plaintiff to reply to Statement of defence and counterclaim for revocation because of late delivery of USB stick containing Annexes (R. 9.3 RoP, R. 29 RoP)

IPPT20250304, UPC CFI, LD Düsseldorf, GlaxoSmithKline Biologicals v Pfizer
Bifurcation ordered: revocation action at CD Milan filed at same date as infringement action (Article 33.(3) UPCA, R. 37 RoP). No stay of infringement action at this stage. Time period for the Defendants’ Rejoinder to the reply to the statement of defence extended with one month (R. 9.3 RoP): exceptional case. Given that the bifurcation decision was taken only relatively shortly before the expiry of the time period for lodging the Rejoinder, it appears appropriate to grant the Defendants an extension by one month. 

IPPT20241224, UPC CFI, LD München, Snowpixie v Golf Tech
Extension of deadline due to health impairments of representative, which are to be further substantiated, for filing Reply in infringement action and Statement of defence in revocation action until 27 December by way of exception (R. 9.3 RoP, R. 29 RoP, R. 284 RoP)

IPPT20241120, UPC CFI, LD Dusseldorf, DexCom v Abbott
Claimants’ time limit for filing Rejoinder to Counterclaim for revocation and the Reply to conditional application to amend extended on grounds of fairness and equity, since the previous time limit was, with the consent of the Claimant, extended to a similar extent in favour of the Defendants. (R. 9 RoP, R. 29(e) RoP , R. 32.3(1) RoP)

IPPT20240913, UPC CFI, LD Munich, Philips IP v Belkin

Late and inadmissible extension of submission of validity arguments in Reply to Defence to the Counterclaim constitutes an amendment of the counterclaim (R. 29 RoP). The introduction of a further citation in the reply to the counterclaim, which is intended to justify the lack of inventive step with regard to the granted version in the context of the counterclaim, constitutes an extension of the counterclaim for invalidity, since the submission is based – extending the previous submission – on a further citation and thus on new facts. This constitutes an extension of the counterclaim within the meaning of Rule 263 RoP. The defendants have not submitted any arguments which, according to Rule 263.2 RoP, could justify the admission of this extension of the counterclaim for revocation despite the delay. The extension of the counterclaim was therefore not admissible.

IPPT20240909, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Panel confirms case management orders judge-rapporteur (R. 333 RoP, R. 262A RoP, R. 29(d) RoP). Panel exercises its authority to order and extension of the time limit for lodging Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence because of redacted versions of Defence in the Counterclaim (Part II – non-technical part) in the same way as the judge-rapporteur: two week extension from 14 August 2024 until 28 August 2024. The defendants in all three parallel proceedings have, when looked at in the light of the circumstances, almost seven weeks to prepare the replies to the reply to ‘Part II - non-technical part’ alone. This is more than the one-month period that would have been available without a nullity counterclaim for the statement in response to the infringement action with regard to the infringement action and the FRAND objection. No leave to appeal granted (R. 220.2 RoP). In issuing this order, the panel is not deviating from the cited orders of the Court of Appeal and the Düsseldorf Local Division.

IPPT20240821, UPC CFI, LD Paris, HP v Lama France
All parts of the Rejoinder to the Reply to the Statement of defence of HP, except point 3 and related exhibits, excluded as inadmissible: not limited to a response to the matters raised in the Reply to the Statement of defence (Rule 29(c) RoP). If HPDC considered that new arguments on the infringement claim justified an additional exchange, it was up to it to request this from the Judge-Rapporteur by means of a reasoned request on Rule 36 RoP. It is clear from R 12 RoP that the Rules of Procedure have divided the written procedure into several successive streams. These flows, accompanied by strict deadlines, have been designed to ensure the most efficient and economical procedure possible before the UPC, in accordance with point 4 of the preamble. Full repetition of arguments does not help the court make better decisions. Full repetition of the arguments is superfluous, tends to increase the number of pages of the pleadings (to date more than 1,760 pages […]) which does not help the judges to give a decision of the highest quality as provided for in point 6 of the RoP preamble.

IPPT20230719, UPC CFI, LD Brussels, OrthoApnea
No suspension of the predetermined deadlines written procedure granted (Rule 9 RoP, Rule 29 RoP). The Rules of Procedure do not provide for a suspension of the predetermined deadlines during the written procedure either after the submission of a Procedural Request, or after the submission of a Request for Review by the panel or after the initiation of an appeal against such review by the panel. A request for suspension can further only be granted if it is proportionate and the balancing of interests of the parties warrants it. This may be the case, for example, if the Defendants' rights of defence are seriously impaired and this is weighed against the Plaintiff's interests, in particular its interest in proceeding expeditiously.

IPPT20240710, UPC CFI, LD Munich, Panasonic v Orope
Lodging written pleadings and confidentiality club. Inadmissible lodging of a redacted “unredacted version” of the Reply (Rule 9(2) RoP, Rule 29 RoP, Rule 262A RoP). An exception be made because the problem is being addressed by the Unified Patent Court for the first time. Time limit for filing a rejoinder in the infringement action does not start to run until the defendants have been served with a fully unredacted Reply to the Statement of defence (Rule 29(c) RoP). Time limits for the counterclaim and the (alternative) amendment of the patent must be considered separately and have started running. Extension denied.  

IPPT20240709, UPC CFI, LD Mannheim, Panasonic v Orope II
Confidentiality club and deadline extension from 17 July to 14 August 2024 (Rule 262A RoP, Rule 29 RoP). The extension is necessary but also sufficient to make a final statement on the FRAND aspect of the dispute. 

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).

IPPT20240704, UPC CFI, LD Munich, Xiaomi v Panasonic II
Confidentiality regime (Rule 262A RoP) and extensions for filing pleadings (Rule 9(3) RoP, Rule 29 RoP). The time limit for filing a Rejoinder shall only run from the date on which the defendants have been served with a completely unredacted Reply. This shall not affect the running of the time limits for the submission of pleadings relating to the Counterclaim for revocation and relating to the (auxiliary) requests for amendment of the patent.

IPPT20240704, UPC CFI, LD Munich, Xiaomi v Panasonic I
Confidentiality club rules (Rule 262A RoP). Disclosure limited to authorised representatives in the present proceedings, parallel proceedings before the Landgericht München and the Landgericht Mannheim, the UPC Local Divisions in München and Mannheim and before the High Court of Justice of England & Wales.Penalty payment only in case of of a culpable violation. Time limit for filing Rejoinder to the Statement of Reply  does not start to run until the fully unredacted Reply is available (Rule 9(3) RoP, Rule 29 RoP, Rule 262A RoP). Time limits regarding the revocation counterclaim and the (alternative) amendment of the patent run independent therefrom. Revocation is independent from FRAND-defence.

IPPT20240627, UPC CFI, LD Düsseldorf, Dolby v HP
Time limit for filing reply to Statement of defence which includes a Counterclaim for revocation extended to two months from the date of access to unredacted information under confidentiality regime (Rule 9(3) RoP, Rule 29(a) RoP, Rule 262A RoP). Need to consult with employees of patent pool related to FRAND objections that relate to a definable part of a statement; interest of effective proceedings and preventing a permanent divergence of time limits if the conduct of the oral hearing is not jeopardised by an extension of the time limit relating to the entire statement.

IPPT20240624, UPC CFI, LD Düsseldorf, Dolby v Asus
Time limit for filing reply to Statement of defence which includes a Counterclaim for revocation extended to within two months of access to unredacted information under confidentiality regime (Rule 9(3) RoP, Rule 29(a) RoP, Rule 262A RoP).

IPPT20240613, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Confidentiality regime (Rule 262A RoP) and extension of deadlines for filing Rejoinder to the Reply in infringement proceedings and Reply to the Defence in the revocation proceedings (Rule 29(d) RoP): rejected for the technical aspects of the case (legal facts and infringement facts); granted for FRAND aspects of dispute (plaintiff's submission contained in the pleadings designated as "Supplement Replica Part II Non-Technical Part" together with annexes on the FRAND aspect of the dispute).

IPPT20240117, UPC CFI, LD The Hague, Plant-e v Arkyne
Ex officio order judge-rapporteur to extend deadline to file Defence in the Counterclaim for revocation and to reunite the claim and counterclaim workflows (Rule 9(3 RoP, Rule 311(1) RoP, Rule 334(a) RoP). Defence to the counterclaim for revocation not filed together with Reply to defence in the claim as required by Rule 29(a) RoP. The apparent misunderstanding of the relevant deadline [for Statement of defence to counterclaim for revocation] by Plant-e Knowledge will in this situation not be held against her; the consequences would be disproportionate.

IPPT20231214, UPC CFI, LD Düsseldorf, Nutricia v Nestlé

The provisions of the Brussels 1-bis Regulation do not apply to a counterclaim for revocation, which is to be included in the Statement of defence (Rule 25(1) RoP, Rule 270 RoP). At the request of the claimant, the Court clarifies that the time limit for filing the Defence to the Counterclaim for revocation and any Application for the amendment of the patent is 20 December 2023 (Rule 29 RoP, Rule 30 RoP, Rule 32 RoP).

IPPT20231128, UPC CFI, LD Hamburg, Avago v Tesla

The start of time limit of two months for responding to the Statement of Defence which includes a Counterclaim for revocation (Rule 29a RoP) is to be set on the date of the conclusion of the R. 262A proceedings, i.e. 8 November 2023. Opposing party to be heard on synchronizing time limit for replying to the nullity counterclaim with the time limit for replying to the Statement of Defence (Rule 264 RoP).