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:

Court of First Instance

IPPT20250117, UPC CFI, CD Paris, NJOY Netherlands v Juul Labs
Auxiliary requests.  Late filed auxiliary request 2b (R. 30. 2 RoP). Although Defendant indeed acted swiftly in submitting the application within one week after the EP 115 decision becoming available, the substantive part of the EP 115 decision that triggered the filing of new auxiliary requests, i.e. the claim clarity argument, could not have come as a surprise to Defendant. In the current proceedings, the “clarity argument”, i.e. the argument that the term “the mouthpiece (31) encloses the second end of the cartridge (30, 30a) and the second end of the fluid storage compartment (32)” is unclear, has been raised by Claimant in the present proceedings in its Reply to Defence to Revocation and Defence to an Application to amend the Patent in mn 359, 390. Auxiliary request 2c allowed by discretion of the Court (R. 9.2 RoP) and will not disregard the auxiliary requests 1 to 12 filed by Defendant on 30 October 2024. The order of 25 June 2024 gave Defendant the option (“may identify”) to narrow down the set of auxiliary requests already on file. The Court considers Defendant’s motion to narrow down the auxiliary to the auxiliary requests I to XII as expedient for an efficient procedure and hence beneficial to Claimant, too. Without the motion to file the auxiliary requests I to XII, the originally filed auxiliary requests 1 to 57 would have remained on file to be dealt with in a manner that would yet have to be decided. Requests to review 65 auxiliary requests to be rejected as unreasonable in number in the circumstances of the case (R. 30.1 RoP, R. 50.2 RoP). In the particular case, the proposed twelve conditional amendments that form the twelve auxiliary requests of request are considered to be the upper limit of what can be considered reasonable. Auxiliary request 2d unallowable because it is unclear and not supported by any arguments from the defendants. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims Defendant would want the Court to examine under request (2) d. in which order. 

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.