Rule 30 – Application to amend the patent
Print this page1. The Defence to the Counterclaim for revocation may include an Application by the proprietor of the patent to amend the patent which shall contain:
(a) the proposed amendments of the claims of the patent concerned and/or specification, including where applicable and appropriate one or more alternative sets of claims (auxiliary requests), in the language in which the patent was granted; where the language of the proceedings [Rule 14.3] is not the language in which the patent was granted, the proprietor shall lodge a translation of the proposed amendments in the language of the proceedings, and where the patent is a European patent with unitary effect in the language of the defendant’s domicile in a Member State of the EU or of the place of the alleged infringement or threatened infringement in a Contracting Member State if so requested by the defendant;
(b) 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 and, if applicable, why they are infringed; and
(c) an indication whether the proposals are conditional or unconditional; the proposed amendments, if conditional, must be reasonable in number in the circumstances of the case.
2. Any subsequent request to amend the patent may only be admitted into the proceedings with the permission of the Court.
3. Where other proceedings involving the patent subject to an Application to amend the patent are pending, the claimant shall notify the Court or the authority in question that such an Application has been made and provide the information required in paragraph 1(a).
Case Law
Court of Appeal
IPPT20260327, UPC CoA, Onward v Niche
Admissibility of auxiliary requests in provisional measures proceedings (R. 30 RoP, R. 222 RoP). Asserting a patent in an amended (non-granted) form is not automatically inadmissible and depends on the circumstances of the case. Whether such amended claims are suitable is assessed in light of the expedited and limited nature of preliminary injunction proceedings. Parties may file auxiliary requests, but their admissibility depends on procedural rules and timing. The admission of new (auxiliary) requests in appeal proceedings is subject to the court’s discretion under R. 222 RoP.
Court of First Instance
IPPT20260225, UPC CFI, LD The Hague, GSK v. Pfizer
One week extension for the submission of the Rejoinder / Reply / Defence , for the application for amendment of the patent. (Rule 9.3 RoP, Rule 29 RoP, Rule 30 RoP). Extension will not affect the dates already set for the interim conference and oral hearing.
IPPT20260422, UPC CFI CD Paris, Huntsman v BASF
Patent maintained in amended form. Application to amend the patent (R. 30 RoP). When examining the auxiliary claims, the court is bound by the arguments put forward by the plaintiff regarding their patentability and takes only those into account. The grounds cited in the main claim with respect to the granted version are therefore taken into account when examining the auxiliary claims only if the plaintiff invoke s them.
IPPT20260107, UPC CFI, CD Paris, Microsoft v Suinno
Application to amend patent (Article 123 (2) EPC, Rule 30 RoP) . Auxiliary Requests II – XVII not admissible as they not compliant with the requirements of Rule 30 (1) 'RoP' and don't enable the Court to unambiguously understand the scope of the proposed amendments . The Auxiliary Request is unable to remedy the detected defect, the patent remains invalid even in the formulation proposed by the Auxiliary Request. The defendant in a counterclaim for revocation is entitled to amend the patent, provided the relevant application is included in the statement of defence (or meets the filing deadline for this application) and contains the information referred to in Rule 30 ‘RoP’. This includes the language of the application, an indication of whether the amendments are conditional or unconditional, and an explanation of how the amendments comply with Articles 84 and 123 (2) (3) ‘EPC’ and why the proposed amended claims are valid. Rule 30 (1) (c) also requires that the proposed amendments must be reasonable in number in the circumstances of the case. Failure to reach the requirements leads to inadmissibility of the application. Requirements objective in character: the deadline within which the application must be filed, must contain at least one amendment, and that the same (or the same amendments) must be formulated in the language of the patent . Conversely, matters of judicial discretion are the assessment of clarity, sufficiency of the explanation regarding validity and infringement, and the reasonableness of the number of amendments. Necessity for consolidated documents where the proposed amendments have a significant impact on the patent. A request for the deletion of one or more claims may not require the concurrent submission of a document containing the full set of the claims. Content of the patent is the responsibility of the applicant, no manipulative intervention by the Court is permitted, or, no assistance may be provided by the Court to the party in producing a clear and intelligible draft .
IPPT20251219, UPC CFI, LD Munich, GXB-Bio Corporation v Myriad
Application to amend the patent based on Auxiliary Requests 1,2 or 3 refused. (Rule 30 RoP). Each of these Auxiliary Requests extends beyond the content of the application as filed.
IPPT20251120, UPC CFI, CD Munich, Baussmann v Raimund Beck Nageltechnik
Patent partially revoked for lack of inventive step , to the extent it covers more than auxiliary request III, with claims 5 and 6 remaining unchanged. (Article 56 EPC, Rule 25 RoP, Rule 30 RoP).
IPPT20251127, UPC CFI, CD Milan, Pai Pharma v Philips
Partial revocation (Article 65(3) UPCA). Auxiliary request 1 inadmissible: leaves the amendment of the patent to the discretion of the Court, and is furthermore illogical, thus perplex. The Court may may not assess clarity and conciseness issues, if they stem from unclarity issues already present in granted dependent claims (Article 84 EPC).
IPPT20251020, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Filing of 17 Auxiliary Requests not ‘unreasonable’ (R. 30 RoP) considering the complexity of the case (in particular, the number of lines of attacks to the patent). The lack of a consistent interpretation of the expression ‘reasonable in number’ also suggests a less strict interpretation of this relevant provision.
IPPT20251017, UPC CFI, LD Munich, Onward Medical v Niche Biomedical
Provisional measures rejected. (Article 62 UPCA, Rule 206 RoP) . Auxiliary requests seeking provisional measures on amended versions of the patent rejected .(Rule 211 RoP, Rule 30 RoP). Rule 30 is not applicable in proceedings for interim measures under Article 62 UPCA
IPPT20250912, UPC CFI LD Düsseldorf, Trumpf v IPG Laser II
Subsequent requests for amendment of the patent rejected. (Rule 30(2) RoP). Application not sufficient to enable court’s to exercise discretion. Plaintiff's reasoning limited to general statements.The Plaintiff did not establish a connection between the amendments made in the auxiliary motions and specific arguments made by the defendant in the proceedings. The court was unable to assess whether the admission of the further auxiliary motions complies with the principles of proportionality, flexibility, fairness, and equity.
IPPT20250822, UPC CFI, LD Munich, Brita v Aquashield
Any amendment to the contested patent must satisfy the requirements of Article 84 EPC. Rule 30.1(b) RoP explicitly requires that a request for amendment of the patent must include, inter alia, an explanation of why the amendment meets the requirements of Article 84 EPC. It must therefore be examined whether the amendment introduces a lack of clarity.
IPPT20250721, UPC CFI, RD Nordic Baltic, Edwards v Meril
22 auxiliary requests reasonable (R. 30 RoP). Edwards explained that auxiliary request 11 and 1’ to 10’ had been submitted in order to streamline the proceedings and to simplify the Court’s work in case there would be an issue in one of the dependent claims.
IPPT20250721, UPC CFI, CD Paris, Sibio v Abott
Auxiliary requests included in Defence to revocation admissible (R. 30 RoP) even though the official electronic form (R. 4 RoP) was not used.
IPPT20250710, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi
Reasonable number of auxiliary requests (twice 33) (R. 30.1(c) RoP) because the actual core of the auxiliary requests is small, the opposing party is not faced with unreasonable challenges, even if the number of auxiliary requests is quite high.
IPPT20250606, UPC CFI, LD Mannheim, Dish v Aylo
Revocation of dependent subclaims (Article 65 UPCA). There is generally no legal interest in the isolated removal of dependent subclaims by means of an action for annulment (or counterclaim) without removing the independent claim to which they refer. The subject matter of the patent in suit is not extended by these subclaims as such. Appropriate number of auxiliary request depends on the circumstances of the case and the number of attacks on the patent in suit may also be taken into account (R. 30.1 c) RoP). Amendments to corrective measures of the Statement of claim are not objectionable as such (R. 263 RoP, R. 30 RoP). Insofar as the request for amendment of the patent pursuant to R. 30 RoP is admissible, the consequential amendments to the infringement action are therefore also admissible. Left open whether assertion of equivalent patent infringement following the statement of claim constitutes a change to the grounds for the action or otherwise constitutes an amendment to the action within the meaning of R. 263 RoP. In any case, such an amendment to the action would be permissible in the present case. The amendment could not have been made earlier with the required care (R. 263.2 (a) RoP). It is a response to the arguments put forward in the statements of defence.
IPPT20250529, UPC CFI, CD Paris, Lindal v Rocep-Lusol
Application to amend the patent (R. 30 RoP). Auxiliary requests must be addressed in the order indicated by the defendant, in the absence of specific elements and/or requests suggesting otherwise.
IPPT20250508, UPC CFI, LD Mannheim, Polidoro v Bekaert
Extension of time period for the Claimant’s Reply to the Statement of defence, the Defence to the Counterclaim for revocation and an Application to amend the patent until 19 May 2025 since access to unredacted version of the Statement of defence was delayed because of setting up of confidentiality club regime (R. 29 RoP, R. 30 RoP, R. 262A RoP)
IPPT20250428, UPC CFI, LD Hamburg, Nera v Xiaomi
Application rejected for disregarding statements in point 15 of plaintiff’s reply of 10 march 2025 as late filed (R. 9.2 RoP, Rule 29(a) RoP, Rule 30 RoP. Plaintiff has satisfied the requirements of Rule 29 and 30 RoP in its response to the counterclaim and request for amendment of the patent dated 7 November 2024, which is why the supplementary explanations in the plaintiff's reply dated 10 March 2025 cannot be rejected as belated. The auxiliary requests 19/19A and 22/22A are therefore not new auxiliary requests which, according to Rule 30.2 VerfO, would require the court's approval
IPPT20250418, UPC CFI, CD Munich, Kunststoff v Häfele
Number of auxiliary reques0st to be limited to up to 10 (from 80) (R. 50 RoP, R. 30 RoP).
IPPT20250411, UPC CFI, LD Munich, 10x Genomics v Bruker
A total of 4 auxiliary requests is indisputably in each case a reasonable number of auxiliary requests (Rule 30.1 c) RoP).
IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - II
IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - II
Admissible auxiliary requests in Reply to Statement of defence and counterclaim for revocation (R. 30 RoP, R. 263 RoP). Such consequential adjustments to the infringement action are covered by R. 30 RoP without the necessity to formally apply for leave to change the claim or amend the case in accordance with R. 263 RoP. […]. Partially fending off counterclaim for revocation –(Article 65(3) UPCA. R. 30 RoP) requires filing a proper request specifying the extent to which the patent-in-dispute shall be maintained in part (deviating opinion with regard to subclaims: Central Division, Paris seat, decision of 22 January 2025, UPC_CFI_310/2023, GRUR-RS 2025, 637 mn. 138). A separate defence of dependent claims as granted is not admissible in the case at hand. Claimant did not properly apply for an amendment of the patent-in-suit based on dependant claims or a combination thereof as new independent claim.
IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
Amendment of patent and of request in infringement action (R. 30 RoP, R. 263 RoP, R. 265 RoP). Auxiliary requests in reply to statement of defence with regard to infringement action are covered by R. 30 RoP without necessity to formally apply for leave to change the claim or amend the case in accordance with R. 263 RoP. R. 263 RoP does not address amendments of original requests for the infringement action from the original main claim to the original auxiliary request as the new main request, which relates to the mere wording only, not to the substantive content of the request. Even if one considered the transition to be a partial withdrawal of the statement of claim in the meaning of R. 265 RoP, such partial withdrawal would have to be granted under R. 265 RoP. An amendment in response to concerns raised by the Court does not constitute a change or amendment in the meaning of R. 263 RoP if the lack of specificity and the amendment responding to it concern the wording only but not the content of the request. Even if the lack of specificity and the amendment concerned the substance of the requests, it would serve the purpose of removing a potential lack of substantive specificity only after having been addressed by the court. Such amendment would have to be admissible under R. 263 RoP on a regular basis if it does not unduly hinder the defence of defendant.
IPPT20250331, UPC CFI, LD Munich, Jingao v Chint
Leave to change claim following amendment of patent in opposition proceedings (R. 263 RoP, R. 30 RoP). Rule 30 RoP not restricted to amendments directly related to the grounds for invalidity asserted in the counterclaim for revocation, but may also not be directly related to the grounds for invalidity arising from the counterclaim. If dependent patent claims are made the subject of auxiliary requests within an application it must also be possible for the patentee to make corresponding amendments with regard to the infringement action. Synchronisation proceedings before the UPC with those before the EPO can only work if it is possible to introduce claim versions amended by the EPO into (infringement) proceedings before the UPC (R. 295(a) RoP, R. 30 RoP)
IPPT20250219, UPC CFI, LD Hamburg, Lionra v Cisco
Application to amend the patent (R. 30 RoP) A necessity to submit "complete" sets of claims cannot be derived from the UPCA or its Rules of Procedure. Insofar as the defendants have requested in their reply that further prior art be admitted as an extension of the counterclaim, this request must be granted: the plaintiff has changed its interpretation and the allegation of infringement in the Reply in the infringement proceedings compared to the statement of claim, or at least supplemented itsince the plaintiff has changed its interpretation.
IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Clarity and conciseness (Article 84 EPC) can only be examined for amendments to the claims of a granted patent in as far as any unclarity or inconciseness in the amended claims is the result of the amendment and was not already present in the granted claims (so also G 3/14).
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.
IPPT20250113, UPC CFI, LD Munich, 10x Genomics v Nanostring
Panel review of order of judge-rapporteur to limit the number of auxiliary requests to a one-digit number (R. 30 RoP, R. 333 RoP). If the outcome of the proceedings before the EPO is to be reflected and taken into account in the present proceedings and therefore the present proceedings were ordered to stay, it must be possible for Claimant 2) to adjust his auxiliary requests in the present proceedings according to the decision of the Opposition Division. It is not possible at this stage to assess what number of auxiliary requests will ultimately be considered reasonable. Claimant 2) is ordered to submit his auxiliary requests within 20 days after the decision of the Opposition Division of the EPO.
IPPT20241230, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi
Requests to be decided by the judge-rapporteur or the panel. Procedural economy: request to amend the action based on a request to amend the patent (R. 30 RoP, R. 263 RoP, R. 334(h) RoP))
The Judge-Rapporteur must keep in mind the principle of procedural economy not only with regard to the parties, but also as a representative for the bench as a whole. In the interests of procedural economy, it is not normally necessary, outside the standardised cases of opposition under Rule 19 RoP, for the panel to decide, in the context of a preliminary ruling under Rule 334 (h) RoP, on questions of substantial significance for the decision on the merits, such as the substantive admissibility of five requests for amendment of the action (R. 263 RoP), which are based on a request for amendment of the patent (R. 30 RoP). Substantive decisions of this scope are regularly to be left to the main proceedings, namely the oral proceedings, in particular the final decision by the panel.
IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Admissibility of subsequent request to amend the patent (R 30(2) RoP) in deference to the need for expeditious judgments and efficient proceedings, the Court may decide the case even by overturning the priority order of the issues to be decided where a determination can be made on the basis of a more easily resolvable reason - albeit logically subordinate - without examining those that are antecedent. For the reasons that will be explained below, there is no need to examine the auxiliary requests contained in the subsequent request to amend the patent, in addition to those timely filed, since the examination of the latter allows the Court to consider the attacks on the validity of the patent to be overcome and renders such later auxiliary requests devoid of any concrete relevance.
IPPT20241220, UPC CFI, LD Hamburg, 10x Genomics v Vizgen
Subsequent request to amend patent rejected (R. 30.2 RoP). The new amendment could have been made at an earlier stage in response to the preliminary opinion of the Opposition Division. Irrespective of whether the defendant's view is correct that the plaintiff in 2) could have filed the two additional auxiliary requests of the third amendment together with the first amendment due to the defendant's attacks on the legal status, it is still not clear why the request was filed at the end of October 2024, even though the EPO's preliminary indication was issued on 2 August 2024.
IPPT20241122, UPC CFI, CD Milan, Insulet v Eoflow
Amendments of the patent are subject to Rule 30 RoP. Rule 263 RoP refers only to amendments to pleadings. Auxiliary request to amend the patent pursuant to Rule 30.2 RoP is not admissible in the proceedings for provisional measures.
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.
IPPT20240826, UPC CFI, LD Hamburg, Avago v Tesla
Reply to revocation counterclaim filed in time within 2 months of service of the counterclaim, irrespective of the use of the official forms. Rule 4.1 sentence 2 RoP is only a directory provision (Rule 30 RoP, Rule 4 RoP) At least in the initial phase of the UPC - the present complaint was submitted on the first day of the UPC’s operation, 1 June 2023 - the Local Chamber considers it appropriate to apply a more generous standard.
IPPT20240805, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce
Subsequent request to amend the patent requires permission of the Court, which permission can be postponed at the discretion of the Court, in which case admission of the auxiliary request is still possible depending on the further progress of the proceedings (Rule 30(2) RoP). Two month period of Rule 32(1) RoP for lodging a Defence to the Application to amend the patent does not apply to later subsequent requests to amend the patent of Rule 30(2) RoP.
IPPT20240802, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
An amendment of an application for amendment of a patent is not governed by Rule 263 RoP but to be classified as a subsequent request to amend the patent within the meaning of Rule 30(2) RoP, which is admissible only with the permission of the Court Territorial limitation of the amendment was inadmissible, in the absence objective reasons for it (Article 34 UPCA). The new applications, without territorial limitations, are ultimately only a clarification of the previous legal situation, is admissible and allowed under Rule 30(2) RoP.
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.
IPPT20240704, UPC CFI, LD Mannheim, Panasonic v Xiaomi
Case management order. Application to amend the patent and a reservation to respond with further amendments? (Rule 30(2) RoP). The question of whether a new amendment will be allowed will have to take into account whether the new amendment would have been necessary at an earlier stage in response to the arguments already submitted by the plaintiff for revocation and whether the late request for amendment will cause delays in the proceedings. In particular, the patent proprietor must provide detailed reasons as to why the later amendment is necessary.
IPPT20240627, UPC CFI, LD Mannheim, Panasonic v Orope
Case management order. The following information and questions have been sent to the parties by the judge-rapporteur in order to structure the further proceedings (Article 43 UPCA, Rule 9(1) RoP, Rule 101(1) RoP). Rule 30(2) RoP is a strict rule of preclusion which allows subsequent requests for amendment of the patent only with the permission of the court. Corresponding requests must be substantiated in detail. When assessing whether a new amendment is permitted, it will be important to consider whether the new amendment would have been necessary at an earlier stage in response to the invalidity plaintiff's arguments and whether the late request for amendment causes delays in the proceedings.
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).
IPPT20240430, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent requests to amend the patent may be filed also after the closing of the written procedure with the permission of the Court however, the admission of this subsequent request must not prejudice the other party’s right to defence (Rule 30(2) RoP). An unconditional amendment and significantly reducing the number od amendment offers a meaningful contribution to the efficiency of the proceedings in term of simplifying the issues which the Court shall address and facilitating a more expeditious decision. Claimant is granted a reasonable time period, set in one month, to lodge an additional defence to defendant’s new set of amendments.Case Law:
IPPT20240227, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Subsequent request to change original request to amend the patent rejected because of insufficient justification (Rule 30(2) RoP). Leave to change claim or amend case and application to amend patent can be filed simultaneously in one pleading, especially in a situation, where strict time periods come into play (Rule 263 RoP, Rule 30 RoP) in accordance with the principles of flexibility, fairness and equity, mentioned in the preamble 2, 4 and 5 of the Rules of Procedures, as well as of the principle of procedural efficiency. 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. Justification of a request to change the original request to amend the patent required in order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent (Rule 30(2) RoP). The development in Munich LD proceedings does not justify the subsequent request to amend the patent: not suitable to fulfil the declared purposes of consistency and procedural economy.
IPPT20240131, UPC CFI, CD Munich, Nanostring v Harvard
Later filed amendments, auxiliary requests (Rule 30(2) RoP, Rule 50(2) RoP). No legal basis for pre-emptively and categorically ruling out the submission of any further auxiliary requests or to order the Defendant to make the auxiliary requests more convergent. The judge-rapporteur emphasized the front-loaded character of UPC proceedings, also where it concerns auxiliary requests (with reference to 50.2 Rule in connection with Rule 30.2 RoP). Last-minute requests and submissions are not what is intended in UPC proceedings.
IPPT20231214, UPC CFI, LD Düsseldorf, Nutricia v Nestlé
The provisions of the Brussels 1-bis Regulation do not apply to a counterclaim for revocation, which is to be included in the Statement of defence (Rule 25(1) RoP, Rule 270 RoP). At the request of the claimant, the Court clarifies that the time limit for filing the Defence to the Counterclaim for revocation and any Application for the amendment of the patent is 20 December 2023 (Rule 29 RoP, Rule 30 RoP, Rule 32 RoP).
