Rule 37 – Application of Article 33(3) of the Agreement

1. As soon as practicable after the closure of the written procedure the panel shall decide by way of order how to proceed with respect to the application of Article 33(3) of the Agreement. The parties shall be given an opportunity to be heard [Rule 264]. The panel shall set out in its order brief reasons for its decision.

2. The Panel may by order take an earlier decision if appropriate having considered the parties’ pleadings and having given the parties an opportunity to be heard [Rule 264].

3. Where the panel decides to proceed in accordance with Article 33(3)(a) of the Agreement, the judgerapporteur shall request the President of the Court of First Instance to allocate to the panel a technically qualified judge if not already allocated pursuant to Rules 33 and 34.

4. Where the panel decides to proceed in accordance with Article 33(3)(b) of the Agreement, the panel may stay the infringement proceedings pending a final decision in the revocation proceedings and shall stay the infringement proceedings where there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision in the revocation proceedings.

5. Where the panel decides to proceed in accordance with Article 33(3)(b) of the Agreement and not to stay the proceedings, the judge-rapporteur of the regional or local division shall communicate to the central division the dates set for the interim conference and for the oral hearing according to Rule 28.

Case Law

IPPT20240202, UPC CFI, LD Munich, Amgen v Renegeron
Bifurcation by unanimous request (Rule 37 RoP). Unanimous requests by all parties directed to a Local or Regional Division to refer a counterclaim for revocation to the Central Division for decision will be granted unless strong counterarguments require a different decision. Provisional decision to proceed with the infringement proceedings (article 33(3) UPCA). In the exercise of its discretion, the Panel decides to proceed with the infringement proceeding, but reserves the right to consider the possibility of suspending the infringement proceeding pursuant to Art. 33.3.c UPCA or to suspend the proceedings for any other reason put forward by the Defendants. […]. If defendants 1-3 had wished to have the Local Division Munich decide exclusively on the validity arguments, they could have filed counterclaims for revocation pursuant to Rule 75 of the Rules of Procedure together with their Statement of Defence, in addition to the independent revocation actions already filed. If they had done so, the Local Division Munich would have been able to decide on all four counterclaims. The Central Division would have been obliged to stay the proceedings on the individual revocation actions pursuant to Rule 75(3) of the Rules of Procedure. 

IPPT20231219, UPC CFI, LD Düsseldorf, Nutricia v Nestlé
Procedural order to hear both the infringement action and the counterclaim for revocation   (Article 33(3)(a) UPCA; Rule 37 RoP). Appropriate in particular for reasons of efficiency and preferable because it allows both issues – validity and infringement – to be decided on the basis of a uniform interpretation of the patent by the same panel composed of the same judges. Although validity and infringement issues in the chemical/pharmaceutical field can be demanding, the panel is composed of judges who are very experienced in patent law and familiar with difficult issues in this context. The assignment of the TQJ, who is experienced in the technical field in question, ensures that the Local Division is undoubtedly capable of deciding both matters.

IPPT20231201, UPC CFI, LD Düsseldorf, Kaldewei v Bette

The local division proceeds with both the action for infringement and with the counterclaim for revocation (article 33(3)(a) UPCA, Rule 37 RoP). Such a joint hearing of the infringement action and the counterclaim for a declaration of invalidity appears to make sense for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel of judges in the same composition. Such a uniform approach is all the more justified if the complexity of the technology in dispute - as here - is rather moderate in the known spectrum of patent disputes and the number of attacks on the legal validity is also manageable.

IPPT20231122, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling

Ordered before the conclusion of the written procedure to hear both the infringement action and the counterclaim for a declaration of invalidity and to request the President of the Court of First Instance to assign a technically qualified judge (article 33(3)(a) UPCA, Rule 37 RoP). The joint hearing of infringement and revocation counterclaims can be useful for reasons of efficiency alone. It is also advantageous in terms of content, as it allows a decision to be made on both the legal status and the question of infringement on the basis of a uniform interpretation by the same panel in the same composition. This applies all the more if the complexity of the technology in dispute is rather moderate in the known spectrum of patent disputes and the number of validity attacks is also manageable.