Rule 44 – Contents of the Statement for revocation

The claimant shall, subject to point (b), lodge a Statement for revocation at the Registry in accordance with Article 7(2) of the Agreement and Annex II thereto. The Statement for revocation shall contain:

(a) particulars in accordance with Rule 13.1(a) to (d) and (g), (h);

(b) where the parties have agreed to bring the action before a local division or a regional division in accordance with Article 33(7) of the Agreement, an indication of the division which shall hear the action, accompanied by evidence of the defendant’s agreement;

(c) where applicable, an indication that the action shall be heard by a single judge [Article 8(7) of the Agreement], accompanied by evidence of the defendant’s agreement;

(d) an indication of the extent to which revocation of the patent is requested;

(e) one or more grounds for revocation, which shall as far as possible be supported by arguments of law, and where appropriate an explanation of the claimant’s proposed claim construction;

(f) an indication of the facts relied on;

(g) the evidence relied on, where available, and an indication of any further evidence which will be offered in support; (h) an indication of any order the claimant will seek during the interim procedure [Rule 104(e)];

and

(i) a list of the documents, including any witness statements, referred to in the Statement for revocation together with any request that all or part of any such document need not be translated and/or any request pursuant to Rule 262.2 and Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis.

Case Law

Court of Appeal

IPPT20251125, UPC CoA, Meril v Edwards
General principles regarding inventive step (Article 56 EPC). The burden and presentation of proof lies with the claimant in a revocation action (Art. 54 and 65(1) UPCA, R. 44(e)-(g), 25.1(b)-(d) RoP). Even though proof of certain facts, if contested, may be required, the assessment of the relevant facts and circumstances is a question of law. 

Court of First Instance

IPPT20251023, UPC CFI, CD Milan, bioMérieux v Labrador
Patent maintained in the form of the third Auxiliary Request (Article 65 UPCA). Appropriate to limit the revocation assessment to a maximum of different documents to challenge the novelty and to argue for non-inventiveness (R. 44 RoP, R. 104 RoP). The Court holds that the attacks not identified by bioMérieux as (most) promising do not warrant further investigation on the merits because, when the party submits a number of attacks that appear to be unmanageable by the Court in accordance with the principles of proportionality (point 3 of the preamble) and speed (point 7 of the preamble), and the same party is unable to re-module some of the attacks in such a way as to allow the Court to organise its time for the efficient management of the proceedings, it must be considered that if the (most) promising attacks, after assessment of the Court, do not affect the validity of the claim(s), the others wouldn’t have done so either. 

IPPT20251020, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Late filed ground of invalidity (R. 44 RoP) the issue concerning the added matter in claim 7 should have [been] filed with the statement for revocation as it constitutes a new and autonomous line of attack and, therefore, it must be excluded from the subject-matter of the proceedings. No late filed arguments in Rejoinder to the Reply to the Defence for revocation regarding skilled person and claim construction (R. 52 RoP). A generous standard is to be applied. Defendant allowed, in light of the principle of fairness, to raise new arguments, facts, and documents, insofar as they are considered capable of supporting their stances, which were already timely taken and disputed by the claimant. The admissibility of these late filed arguments extends also to arguments that, while not constituting a direct response to the defendant’s arguments, are closely related to them. No late filed new evidence: to contrast and react to arguments raised in the Defence to revocation (R. 44 RoP, R. 51 RoP) following the defence raised by the defendant, the claimant may need to produce new evidence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court. Similarly, the defendant may submit new evidence in reaction to facts or evidence produced by the claimant in its reply. 

IPPT20250721, UPC CFI, CD Paris, Sibio v Abbott
Inadmissible newly raised arguments for lack of novelty of the independent claims and added subject-matter in the dependent claims (R. 44 RoP, R. 263 RoP). The newly raised arguments do not follow the defence and there are no objective obstacles to their earlier presentation. Indicating in general terms that D2 will be used to challenge the patent's novelty or inventive step without providing a detailed analysis of the document with respect to novelty is insufficient to establish that this document is being used to challenge the patent's novelty. 

IPPT20250122, UPC CFI, CD Paris, NJOY v VMR

EP 453 maintained in part based on claims 6, 7 and 8 in combination with claim 1 as granted. Admissible new documents Claimant (R. 44 RoP, R. 263 RoP). The claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or affecting inventive step in subsequent written acts. The claimant must specify in the statement of claim the facts that it considers necessary to prove in order to succeed in its claim, together with the relevant evidence. In certain situations, following the defence raised by the defendant, the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. In this case, the need to respond to the defendant's defence, the terms of which cannot be foreseen ex ante by the claimant, justifies the introduction of such new facts in the reply to defence to revocation. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court. The documents introduced by the Claimant in the Reply to defence to revocation – consisting of the declaration released by […] and of the documents referred to in that statement are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and [….] opinion, filed in support of these latter arguments. The admissibility of these late filed documents shall also extend to arguments that, while not constituting a direct response to the Defendant’s arguments, are closely related to them. Late filed auxiliary requests (R. 44 RoP. R. 263 RoP) Insufficient justification by change in strategy regarding coordination with EPO proceedings. The Defendant for the first time in the submission of 30. July 2024 indicated that it (now) wishes to coordinate its defence in both parallel proceedings. The Defendant had not indicated in the Defence to Revocation that the auxiliary requests filed at the time were filed with the aim to coordinate its defence in both parallel proceedings. The Court considers the reason provided with the submission of 30. July 2024 as a change of the strategy of the Defendant. For these reasons, the subsequent requests are inadmissible. 

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Admissible later filed documents (R. 44 RoP, R. 263 RoP) The documents introduced by the Claimants in the Reply to defence to revocation (Exhibits KAP D06, KAP D16 – D26) and the documents introduced by the Defendant in the Rejoinder to the Reply to defence to revocation (Exhibits BB16 – BB27) are admissible, given that they contain arguments regarding the common general knowledge and the claim interpretation which were advanced in their respective initial written pleadings and are intended to contrast and react to the arguments raised by the opposing party. 

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
Claimant in revocation action cannot introduce new grounds of invalidity or introduce new documents considered novelty destroying or affecting inventive step in subsequent written acts (R. 44 RoP, R. 263 RoP). Similarly, the claimant must specify in the statement of claim the facts that it considers necessary to prove in order to succeed in its claim, together with the relevant evidence. However, following the defence raised, the  the claimant may need to allege new facts, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant. Likewise, the need to produce new evidence may arise from the defendant's defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed in Court.

IPPT20241129, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Admissible late filed documents in the Reply to defence to revocation (R. 44 RoP). It must be concluded that the documents introduced by the Claimant in the Reply to defence to revocation – […] – are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and […] opinion, filed in support of these latter arguments. 

IPPT20241007, UPC CFI, RD Nordic-Baltic, Abbott v Dexcom
Order following interim conference (R. 105 RoP). Heller document dismissed as late filed ground for revocation (R. 44 RoP). The Heller document was submitted to the Court by Defendants on 12 August 2024 in its Reply to the Defence to Revocation. The Court is in the position that all the ground for revocation should have been presented in the counterclaim.

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation
Claim 1 of EP ‘708 maintained as amended by auxiliary request II.  Inadmissible late-filed grounds for invalidity (Rule 44 RoP, Rule 30 RoP). New grounds for invalidity (novelty and lack of inventive step) raised in Reply to defence to revocation and Defence to the application to amend the patent, not submitted in the statement for revocation and which did not relate to the amended version of the patent are inadmissible as they are not permitted by the Rules of Procedure and, in general, are contrary to the front-loaded character of the ‘UPC’ proceedings.