Rule 42 – Action to be directed against the patent proprietor

1. Any action for the revocation of a patent shall be directed against the proprietor of the patent.

2. If the action for revocation is directed against the proprietor in accordance with Rule 8.6 (“the registered proprietor”) but the registered proprietor is not a proprietor within the meaning of Rule 8.5(a) or (b) (“the Rule 8.5 proprietor”) each such registered proprietor shall as soon as practicable after service of the Statement for revocation apply to the Court pursuant to Rule 305.1(c) for the substitution of the registered proprietor by the Rule 8.5 proprietor.

Relation with Agreement: Articles 47(5) and 65(1).

Case Law

IPPT20240925, UPC CFI, LD Munich, Hereaeus v Vibrantz - I
A counterclaim for revocation against a registered proprietor (R. 8.6 RoP) who is not entitled to be registered as proprietor (R. 8.5 RoP) is not manifestly bound to fail (R. 361 RoP) (R. 42 RoP, R. 25 RoP). In the event the registered proprietor and the person entitled to be registered as proprietor are not the same, the registered proprietor must file an application under Rule 305.1(c) RP as soon as possible. According to this provision, the court may, at the request of a party, order that one person replace another.

IPPT20240516, UPC CFI, CD Paris, Stäubli Tec-Systems
A prior written notice is no prerequisite for a revocation action (R. 42 RoP, R. 61.1 RoP) but the absence thereof may have consequences for the allocation of legal costs between the parties if the patent proprietor immediately acknowledges or surrenders the patent in response to the action for a declaration of invalidity. (Article 69 UPCA).  If there is no need to adjudicate (R. 360 RoP) the legal costs shall be determined by the full panel (R. 118.5 RoP). In case of a patent waiver Rule 370.9(c)(i) RoP, providing for a 60% refund of Court fees, applies by analogy.