Rule 36 – Further exchanges of written pleadings

Without prejudice to the powers of the judge-rapporteur pursuant to Rule 110.1, on a reasoned request by a party lodged before the date on which the judge-rapporteur intends to close the written procedure [Rule 35(a)], the judge-rapporteur may allow the exchange of further written pleadings, within a period to be specified. Where the exchange of further written pleadings is allowed, the written procedure shall be deemed closed upon expiry of the specified period.

Case Law

Court of Appeal

IPPT20241101, UPC CoA, Scandit v Hand Held Products
Application to file a reply to the Statement of  response rejected (R. 36 RoP, R. 222.2(a) RoP). The fact that Hand Held Products defended the court's interpretation in the response to the appeal with reference to paragraph [0063] does not justify allowing the filing of a reply. Scandit has not substantiated why Hand Held Products' reference to this one paragraph of the patent description requires a new indepth discussion and is not merely a selective aspect of the overall interpretation of features 1.7 to 1.9 of patent claim 1. Scandit will have the opportunity to address this aspect at the oral hearing. Nor can Scandit be allowed to submit further prior art on appeal. In particular, it has not justified that the further prior art which it wishes to submit for the first time in the appeal proceedings could not reasonably have been submitted in the proceedings before the Court of First Instance, as provided for in R. 222.2(a) RoP.

IPPT20240821, UPC CoA, Aylo v Dish - I
Request for discretionary review in the absence of leave to appeal (Rule 220(4) RoP). Parties cannot take procedural steps of their own motion (Rule 9(1) RoP; Rule 36 RoP). It follows from Rule 36 RoP that a reasoned request and authorisation by the judge is required. The written submissions provided for in R.220.4 of the Rules of Procedure are an application and, if the Permanent Judge hears the other party, a reply. Any further submissions must be authorised by the Standing Judge)

IPPT20240821, UPC CoA, Apple v Ona
Reply to Statement of response not taken into account. Further written pleadings may only be filed after a Rule 36 RoP request, filed before the closing of the interim procedure, has been granted (Rule 239 RoP). In appeal there is no provision for notification in accordance with Rule 35a RoP.

IPPT20240617, UPC CoA, Audi v NST

IPPT20240617, UPC CoA, Volkswagen v NST
Further exchange of written pleadings in appeal proceedings allowed  (Rule 36 RoP). The Court of Appeal considers the request by Audi to be sufficiently reasoned. It wants to correct some facts submitted by NST in relation to its behavior in the market, together with written evidence. The Court of Appeal considers that Audi has a sufficient interest to do so and that the written procedure is the most convenient phase to do so. The Court of Appeal therefore allows the request. There is no need to consult NST about this request. NST will be given the opportunity to respond to the additional statement lodged by Audi within 14 days after the day on which this order is issued. 

Court of First Instance

IPPT20250115, UPC CFI, LD Milan, Dainese v Alpinestars
Instead of staying the proceedings, the deadline for the statement of defence and any counterclaims is extended to 27.2.2025 (R. 9 RoP, R. 295 RoP) because of oral hearing in the EPO appeals proceedings scheduled for 13 February 2025: [...]. Possibility of further exchange of written pleadings (R. 36 RoP) On a reasoned request by the other parties, both the plaintiff and the other defendants, they may be granted a period within which to submit their observations on the EPO's decision, in accordance with the procedural faculty provided for in Rule 36 of the Rules of Procedure. It follows that the solution adopted does not violate the adversarial principle and complies with the equality of the parties in the right of defence;

IPPT20241211, UPC CFI, LD Paris, DexCom v Abbott
Inadmissible new added matter ground for revocation raised in Rejoinder to the reply to the Statement of Defence inadmissible (R. 9.2 RoP). Order by the judge-rapporteur allowing further written pleadings (R. 36 RoP) relates to adding some arguments to the debate related to some specific terms regarding claim interpretation, but it did not authorise ABBOTT to raise a new ground for revocation. The UPC procedure is a front-loaded system and the Court finds no legitimate reason to allow a new ground for revocation to be raised at a later stage of the proceedings concerning the validity of the patent as granted, even if such an order would have allowed the other party to respond to the new grounds. 

IPPT20241129, UPC CFI, LD Düsseldorf, Fujifilm v Kodak - I
Defendant’s submissions in the brief of 28 November 2024 will be disregarded (R. 36 RoP). The Defendants did not make a reasoned request and the judge-rapporteur did not allow further written submissions to be exchanged. 
 

IPPT20241030, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Request rejected to allow further written submissions regarding new product version (‘Barryvox S’) (R. 36 RoP). Time available until the date of the oral hearing (26 November 2024) clearly insufficient for (i) further legal classification and treatment thereof, as well as (ii) a reasonable period of time for the defendants response and (iii) sufficient time to prepare for the hearing.

IPPT20241030, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Further written pleading rejected (R. 36 RoP). Would lead to a delay in the proceedings. In view of the oral hearing, which is already scheduled for December, such a delay would be unacceptable to both the Court and the Defendants. The Claimant’s right to be heard is not unduly restricted by the rejection. New factual allegations in the Rejoinder may be rejected (R. 9(2) RoP). If accepted the Claimant will be given the opportunity to respond to the Defendants’ new allegations in the Rejoinder during the interim procedure, but at the latest during the oral hearing. 

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.