Rule 50 – Contents of the Defence to revocation and Counterclaim for infringement

1. The Defence to revocation shall contain the matters referred to in Rule 24(a) to (c).
Rule 29A(a) to (d) and (f) shall apply mutatis mutandis.

2. Any Application to amend the patent shall contain the matters referred to in Rule 30.1(a), (c) and an
explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and
why the proposed amended claims are valid. Rule 30.2 shall apply.

3. Any Counterclaim for infringement shall contain the matters referred to in Rule 13.1(k) to (q).
Rule 13.2 and .3 shall apply.

Case Law:

IPPT20241017, UPC CFI, CD Munich, Nanostring v Harvard
Inadmissible new auxiliary request maintaining all the auxiliary requests already proposed in the application to amend that was made in the Statement of Defence (R. 30 RoP, R. 50 RoP) Under the front-loaded system of UPC proceedings parties are under an obligation to set out their full case as early as possible (Preamble RoP 7, last sentence). The subsequent application to amend was filed late in the proceedings, after closure of the written proceedings and after the interim conference, less than 1.5 months before the (at the time scheduled) oral hearing. 

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation
Claim 1 of EP ‘708 maintained as amended by auxiliary request II. Partial inadmissibility of request to amend patent (Rule 30 RoP, Rule 50 RoP). It must be clarified that if […] a request for patent amendment also concerns nonchallenged claims, such request will not be considered entirely inadmissible, as argued by the claimant, but will instead be considered admissible, and addressed, only with regard to the challenged claims. Furthermore […] the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original claims, mentioned in the non-attacked claims. 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. 

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Admissibility of application to amend the patent (Rule 30 RoP, Rule 50 RoP). If an application to amend the patent is found to be inadmissible, any subsequent request to amend the patent must also be considered inadmissible. This is because a subsequent request inherently presupposes that a previous request was validly submitted. While a complete lack of explanation in an amendment request can render it inadmissible, an insufficient explanation does not necessarily have the same effect. In the latter case, the application may be unsubstantiated but not inadmissible. This unsubstantiated nature would not prevent the defendant from filing a subsequent, compliant request to amend the patent under Rule 30(2) ‘RoP’. The number of the amendments originally filed [9 conditional amendments and 84 auxiliary requests] considered to be extremely high, potentially hindering the efficiency of the ‘UPC’ proceedings and the goal of delivering expeditious decisions, it does not appear that that number is ‘unreasonable’. 

IPPT20240716, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Application to amend (auxiliary requests): Rule 30 RoP applies mutatis mutandis in a revocation action based on Rule 50 RoP.

IPPT20240430, UPC CFI, CD Paris, Carrier v Bitzer Electronics
Application to amend the patent in the Defence to (the Counterclaim for) revocation must refer to claims that have been challenged and is therefore inadmissible to the extent it concerns unchallenged claims (Rule 30 RoP, Rule 50 RoP).

IPPT20240227, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
A request to replace the original application to amend the patent with a new set of amendments is not governed by Rule 263 RoP but falls under Rule 50(2) RoP and pursuant to Rule 30(2) RoP such a subsequent request requires the permission of the Court.