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

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.