Rule 30 – Application to amend the patent

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1. The Defence to the Counterclaim for revocation may include an Application by the proprietor of the patent to amend the patent which shall contain:

(a) the proposed amendments of the claims of the patent concerned and/or specification, including where applicable and appropriate one or more alternative sets of claims (auxiliary requests), in the language in which the patent was granted; where the language of the proceedings [Rule 14.3] is not the language in which the patent was granted, the proprietor shall lodge a translation of the proposed amendments in the language of the proceedings, and where the patent is a European patent with unitary effect in the language of the defendant’s domicile in a Member State of the EU or of the place of the alleged infringement or threatened infringement in a Contracting Member State if so requested by the defendant;

(b) an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid and, if applicable, why they are infringed; and

(c) an indication whether the proposals are conditional or unconditional; the proposed amendments, if conditional, must be reasonable in number in the circumstances of the case.

2. Any subsequent request to amend the patent may only be admitted into the proceedings with the permission of the Court.

3. Where other proceedings involving the patent subject to an Application to amend the patent are pending, the claimant shall notify the Court or the authority in question that such an Application has been made and provide the information required in paragraph 1(a).

 

Case Law

 

Court of First Instance

 

IPPT20240826, UPC CFI, LD Hamburg, Avago v Tesla
Reply to revocation counterclaim filed in time within 2 months of service of the counterclaim, irrespective of the use of the official forms. Rule 4.1 sentence 2 RoP is only a directory provision (Rule 30 RoP, Rule 4 RoP) At least in the initial phase of the UPC - the present complaint was submitted on the first day of the UPC’s operation, 1 June 2023 - the Local Chamber considers it appropriate to apply a more generous standard. 

 

 

IPPT20240805, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce
Subsequent request to amend the patent requires permission of the Court, which permission can be postponed at the discretion of the Court, in which case admission of the auxiliary request is still possible depending on the further progress of the proceedings (Rule 30(2) RoP). Two month period of Rule 32(1) RoP for lodging a Defence to the Application to amend the patent does not apply to later subsequent requests to amend the patent of Rule 30(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 Territorial limitation of the amendment was inadmissible, in the absence objective reasons for it (Article 34 UPCA). The new applications, without territorial limitations, are ultimately only a clarification of the previous legal situation, is admissible and allowed under Rule 30(2) RoP

 

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation
Claim 1 of EP ‘708 maintained as amended by auxiliary request II. Partial inadmissibility of request to amend patent (Rule 30 RoP, Rule 50 RoP). It must be clarified that if […] a request for patent amendment also concerns nonchallenged claims, such request will not be considered entirely inadmissible, as argued by the claimant, but will instead be considered admissible, and addressed, only with regard to the challenged claims. Furthermore […] the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original claims, mentioned in the non-attacked claims. Inadmissible late-filed grounds for invalidity (Rule 44 RoP, Rule 30 RoP). New grounds for invalidity (novelty and lack of inventive step) raised in Reply to defence to revocation and Defence to the application to amend the patent, not submitted in the statement for revocation and which did not relate to the amended version of the patent are inadmissible as they are not permitted by the Rules of Procedure and, in general, are contrary to the front-loaded character of the ‘UPC’ proceedings. 

 

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Admissibility of application to amend the patent (Rule 30 RoP, Rule 50 RoP). If an application to amend the patent is found to be inadmissible, any subsequent request to amend the patent must also be considered inadmissible. This is because a subsequent request inherently presupposes that a previous request was validly submitted. While a complete lack of explanation in an amendment request can render it inadmissible, an insufficient explanation does not necessarily have the same effect. In the latter case, the application may be unsubstantiated but not inadmissible. This unsubstantiated nature would not prevent the defendant from filing a subsequent, compliant request to amend the patent under Rule 30(2) ‘RoP’. The number of the amendments originally filed [9 conditional amendments and 84 auxiliary requests] considered to be extremely high, potentially hindering the efficiency of the ‘UPC’ proceedings and the goal of delivering expeditious decisions, it does not appear that that number is ‘unreasonable’. 

 

IPPT20240716, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Application to amend (auxiliary requests): Rule 30 RoP applies mutatis mutandis in a revocation action based on Rule 50 RoP.

 

IPPT20240704, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Case management order. Application to amend the patent and a reservation to respond with further amendments? (Rule 30(2) RoP). The question of whether a new amendment will be allowed will have to take into account whether the new amendment would have been necessary at an earlier stage in response to the arguments already submitted by the plaintiff for revocation and whether the late request for amendment will cause delays in the proceedings. In particular, the patent proprietor must provide detailed reasons as to why the later amendment is necessary.


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). Rule 30(2) RoP is a strict rule of preclusion which allows subsequent requests for amendment of the patent only with the permission of the court. Corresponding requests must be substantiated in detail. When assessing whether a new amendment is permitted, it will be important to consider whether the new amendment would have been necessary at an earlier stage in response to the invalidity plaintiff's arguments and whether the late request for amendment causes delays in the proceedings. 

 

IPPT20240430, UPC CFI, CD Paris, Carrier v Bitzer Electronics
Application to amend the patent in the Defence to (the Counterclaim for) revocation must refer to claims that have been challenged and is therefore inadmissible to the extent it concerns unchallenged claims (Rule 30 RoP, Rule 50 RoP).

 

IPPT20240430, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent requests to amend the patent may be filed also after the closing of the written procedure with the permission of the Court however, the admission of this subsequent request must not prejudice the other party’s right to defence (Rule 30(2) RoP). An unconditional amendment and significantly reducing the number od amendment offers a meaningful contribution to the efficiency of the proceedings in term of simplifying the issues which the Court shall address and facilitating a more expeditious decision. Claimant is granted a reasonable time period, set in one month, to lodge an additional defence to defendant’s new set of amendments.Case Law: 

 

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. Justification of a request to change the original request to amend the patent required in order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent (Rule 30(2) RoP). The development in Munich LD proceedings does not justify the subsequent request to amend the patent: not suitable to fulfil the declared purposes of consistency and procedural economy. 

 

IPPT20240131, UPC CFI, CD Munich, Nanostring v Harvard

Later filed amendments, auxiliary requests (Rule 30(2) RoP, Rule 50(2) RoP). No legal basis for pre-emptively and categorically ruling out the submission of any further auxiliary requests or to order the Defendant to make the auxiliary requests more convergent. The judge-rapporteur emphasized the front-loaded character of UPC proceedings, also where it concerns auxiliary requests (with reference to 50.2 Rule in connection with Rule 30.2 RoP). Last-minute requests and submissions are not what is intended in UPC proceedings.

 

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 RoPRule 30 RoPRule 32 RoP).