Rule 8 – Party and party’s representative

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1. A party shall be represented in accordance with Article 48 of the Agreement unless otherwise provided by these Rules [Rules 5, 88.4 and 378.5].

2. For the purpose of all proceedings in relation to a patent, where these Rules provide that a party performs any act or that any act be performed upon a party that act shall be performed by or upon the representative for the time being of the party.

3. Except where these Rules provide otherwise, a party shall not communicate with the Court without informing the other party. Where such communication is in writing, the communication should be copied to the other party unless these Rules provide that the Court will supply a copy to the other party.

4. For the purposes of proceedings under these Rules in relation to the proprietor of a European patent with unitary effect, the person shown in the Register for unitary patent protection [Regulation (EU) No 1257/2012, Article 2(e)] as the proprietor shall be treated as such. If during proceedings before the Court a new proprietor is recorded in the Register for unitary patent protection, the former registered proprietor may apply to the Court pursuant to Rule 305.1(c) for the substitution of the new proprietor.

5. Subject to paragraph 6, for the purposes of proceedings under these Rules:

(a) in relation to the proprietor of a European patent, the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent has been validated shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State (hereinafter “national patent register”); and

(b) in relation to the applicant for a European patent, the person entitled to be registered as applicant whether or not such person is in fact recorded as such in the European Patent Register kept by the European Patent Office.

(c) For the purposes of paragraph 5, there shall be a rebuttable presumption that the person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered as proprietor or applicant as the case may be. 

6. For the purposes of proceedings pursuant to Rules 42 and 61 in relation to a European patent, the person shown in the national patent register [Rule 8.5(a)] as the proprietor shall be treated as such for each Contracting Member State or, as far as no such person is registered in a national patent register, the last person shown recorded as proprietor in the European Patent Register kept by the European Patent Office.

 

Relation with Agreement: Article 48

 

Case Law:

 

Court of Appeal

 

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II

Applicants 2 are entitled to file the application for provisional measures. Due to their corresponding entry in the Register for Unitary Patent Protection, Applicants 2 are to be treated as the proprietor of the patent at issue (Rule 8(4) RoP, Article 47(1) UPCA. According to the findings of the Court of First Instance, which are not contested in the Appeal, Applicant 1 is in any case entitled to file an application as the holder of a non-exclusive licence granted to it by Applicants 2 under Art. 47(3) UPCA. 

 

IPPT20240208, UPC CoA, Ocado v Autostore
Public access to register requires representation (Rule 8 RoP, Rule 262 RoP, Article 47 UPCA, Article 48 UPCA). ‘Parties’ requiring representation pursuant to Rule 8(1) RoP encompasses also (i) a third party affected by an order or decision such as a third party under Rule 190 RoP and (ii) a member of the public under Rule 262.1(b) RoP. Opt-out applicants are expressly exempted in Rule 5(4) RoP..Members of the public requesting access to the register pursuant to Rule 262 RoP are in an adversarial situation where representation is called for.

 

IPPT20231211, UPC CoA, Ocado v Autostore 

Parties to address whether a third party requesting access to documents under Rule 262 RoP needs to be represented as a party before the UPC under Rule 8 RoP.

 

Court of First Instance

 

 

IPPT20240702, UPC CFI, CD Paris, Microsoft v Suinno
Request rejected to declare the infringement action manifestly inadmissible (Rule 361 RoP) because (a) the claimant was not duly represented according to Article 48 of the Unified Patent Court Agreement (‘UPCA’) and Rule 8 (1) ‘RoP’ or (b) the content of the statement of claim was insufficient, as it lacked the requirements provided for by Rule 13 (1) (k) ‘RoP’. On due representation (Article 48 UPCA, Rule 8 (1) RoP, Rule 290(2) RoP): The mere fact that […] also carries out active administrative tasks on behalf of the represented party and that he may be directly interested in the outcome of the case is not decisive in order to consider that the representative is not independent for the purposes of interest here. Possible violation of the obligation of independence can only be asserted by the represented party, not by the counterparty. 

 

IPPT20240604, UPC CFI, LD Hamburg, Avago v Tesla
Rebuttable presumption that the registered person is the patent proprietor (Rule 8(5) RoP). Defendants allowed to examine those resolutions to which the property right holder listed in the register, i.e. the plaintiff, has itself referred in the proceedings (Rule 190 RoP), inluding: the resolution of the Board of Directors of [...] to authorise [...] to act on behalf of [...], as referred to in the Power of Attorney submitted as Exhibit EIP 12 and the resolution of the Board of Directors of [...] referred to in the Power of Attorney submitted as Exhibit EIP 12 authorising the transfer of the patent-in-suit from [...] to Avago Technologies General IP (Singapore) Pte. Ltd.

 

IPPT20240508, UPC CFI, LD Munich, Volkswagen et al. v NST
NST has full standing to sue for a declaration of infringement of EP’669 and for a related claim for damages as assignee of the original owner, including fot prior infringements (Rule 8.5 RoP). NST has provided documentary evidence of the assignment of the patent in suit and of all the related rights. 

 

IPPT20240430, UPC CFI, LD Düsseldorf, 10x Genomics v Curio Bioscience
Rebuttable presumption that a person registered as the patent proprietor in the respective national register is entitled to be registered (Rule 8.5(c) RoP, Rule 211.2 RoP, Article 47 UPCA,).