Rule 49 – Lodging of the Defence to revocation
Print this page1. The defendant shall lodge a Defence to revocation within two months of service of the Statement for revocation.
2. The Defence to revocation may include:
(a) an Application to amend the patent;
(b) a Counterclaim for infringement.
Case Law:
Court of First Instance
IPPT20240917, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Retrospective extension of the time period for lodging counterclaim for infringement because of malfunction of CMS (R. 9(3) RoP, R. 49 RoP). The evidence shows that the respondent was not able to submit the written pleading in the proper CMS workflow due to circumstances that were beyond its reasonable control as the technical difficulties that its representatives experienced do not seem to be attributable to an operator error but rather to a malfunction of the CMS.
IPPT20240702, UPC CFI, CD Paris, Nokia v Mala Technologies
Application to amend the patent not inadmissible because Defendant failed to initiate the correct workflow in the CMS (Rule 4.1 RoP, Rule 49.2(a) RoP). The arguments underlying the Application to amend were brought to the attention of the court and Plaintiff within the 2-month time limit of R 49 (1), (2) RoP. No disadvantage arose for Plaintiff because Defendant failed to open a separate workflow. The Rules of Procedure have to be interpreted with reference to the principles of fairness and proportionality (Preamble No. 2 RoP).
IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. No stay of UPC revocation action possible because of pending German revocation proceedings. Article 30 (1) Brussels I Reg recast is not applicable and in accordance with Art. 33 (10) UPCA and Rule 295 RoP, the UPC may only stay its proceedings in cases involving EPO opposition proceedings when a swift decision is anticipated from the EPO. No time extension for lodging Statement of defence to revocation because of preliminary objection (Rule 49.1 RoP, Rule 9.3 RoP).
IPPT20240209, UPC CFI, CD Paris, ITCiCo Spain v Bayerische Motoren Werke
Request to extend time limit for filing Defence to revocation rejected (Rule 9 RoP, RoP 49 RoP). An impossibility or an extreme difficulty to meet the deadline which is attributable to the party requesting the extension of the deadline or its representative does not come into consideration, as it may not be deemed as objective. Principle of fair trial obliges a party to submit a request for time extension as soon as it appears clear that the meeting of the deadline will not be possible. Difficulties with smart card verification device and illness of patent attorney devoid of evidence. A party's representative waiting for the smart card verification device after the service of the statement of claim (and the reception of the information concerning the lodging of the revocation action) is expected to seek a solution in an appropriate time and act accordingly (for example, by submitting requests to the Court or the Registry).
IPPT20240117, UPC CFI, LD The Hague, Plant-e v Arkyne
Ex officio order judge-rapporteur to extend deadline to file Defence in the Counterclaim for revocation and to reunite the claim and counterclaim workflows (Rule 9(3 RoP, Rule 311(1) RoP, Rule 334(a) RoP). Defence to the counterclaim for revocation not filed together with Reply to defence in the claim as required by Rule 29(a) RoP. The apparent misunderstanding of the relevant deadline [for Statement of defence to counterclaim for revocation] by Plant-e Knowledge will in this situation not be held against her; the consequences would be disproportionate.