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: 

 

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).