Rule 43 – Exchange of written pleadings (revocation action)

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1. The written procedure shall consist of:

(a) the lodging of a Statement for revocation (by the claimant) [Rule 44]; and

(b) the lodging of a Defence to revocation (by the defendant) [Rule 49]; and optionally

(c) the lodging of a Reply to the Defence to revocation (by the claimant) [Rule 51];

(d) the lodging of a Rejoinder to the Reply (by the defendant) [Rule 52].

2. The Defence to revocation may include:

(a) an Application to amend the patent; and

(b) a Counterclaim for infringement by the proprietor of the patent.

3. If an Application to amend the patent is lodged, the claimant shall lodge a Defence to the Application to amend the patent. The defendant may lodge a Reply to the Defence to the Application. The claimant may lodge a Rejoinder to the Reply. The Rejoinder shall be limited to a response to the matters raised in the Reply.

4. If a Counterclaim for infringement is lodged, the claimant shall lodge a Defence to the Counterclaim for infringement [Rule 56], the defendant may lodge a Reply to the Defence to the Counterclaim [Rule 56.3] and the claimant may lodge a Rejoinder to the Reply [Rule 56.4].

5. Rule 12.5 shall apply.

 

Case Law:

 

IPPT20260330, UPC CFI, CD Paris, Emporia v Seoul Viosys

Partial revocation on grounds of added subject matter following invalidation of independent claim 1 in appeal. (Article 65 UPCA, Rule 75 RoP , Article 123 (2) EPC).The revocation of an independent claim (1) does not automatically affect the validity of unchallenged dependent claims. (Article 65 UPCA , Article 84 EPC) as the latter may possess autonomous patentability due to additional technical features.The remaining claims stay in force and shall operate as new independent or dependent claims. Evidently, where the claim is revoked, the proprietor is typically required to file an application to amend to recast a dependent claim into an independent form. The patent must be formally restructured to ensure that the new configuration is clear and consistent. (Article 84 EPC). It is possible to include multiple independent claims in the same category (Rule 43 (2) RoP) where the subject-matter of the patent relates to interrelated products, different uses of a product or apparatus, or alternative solutions to a particular problem.

 

IPPT20250526, UPC CFI, CD Munich, Baussmann v Raimund Beck Nageltechnik
Pleadings to be uploaded in workflow ‘Application for amendment of a patent’ in the CMS to allow plaintiff the opportunity to file a Rejoinder to the Reply to the Defence to revocation (R. 43.3 RoP)

 

IPPT20240124, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
No automatic right for Claimant to reply to Rejoinder by Defendant (Rule 12 RoP, Rule 43 RoP). Generally, fixed framework of written submissions and front-loaded character of the UPC proceedings designed to conduct UPC proceedings in an efficient, proportionate, fair and equitable way. Request allowable: a bona fide attempt to respond concisely to new points made for the first time in the last written submission. No right Defendant to react to reply: right to be heard does not entail that there should be yet another exchange between the parties. Defendant has the right to be heard at the oral hearing. 

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