Rule 32 – Lodging of the Defence to the Application to amend the patent, the Reply to the Defence and the Rejoinder to the Reply

1. Within two months of service of an Application to amend the patent, the defendant shall lodge a Defence to the Application to amend the patent setting out whether he opposes the Application to amend the patent and, if so, why:

(a) the proposed amendments are not allowable; and

(b) the patent cannot be maintained as requested.

2. Where appropriate in view of the proposed amendments, the Defence to the Application to amend the patent may contain submissions in accordance with Rule 44(d) to (h) and alternative non-infringement submissions.

3. The proprietor may lodge a Reply to the Defence to the Application to amend the patent within one month of service of the Defence and the defendant may within one month of the service of the Reply lodge a Rejoinder to the Reply. The Rejoinder shall be limited to the matters raised in the Reply.

Case Law:

Court of Appeal

IPPT20240426, UPC CoA, AIM Sport v Supponor
Infringement proceedings and Provisional measures proceedings are two different proceedings (Article 32.1(a) and (c) UPCA). The fact that the basis for both proceedings is the same – the same infringement – does not lead to a different conclusion. The “Information about appeal” in the decision should have distinguished between the separate proceedings, such that in the infringement proceedings (ACT_545571/2023) the time period of two months applied and in the provisional measure proceedings (ACT_551054/2023) the applicable time period was 15 days. Principle of the protection of legitimate expectations: excusable error concerning applicable appeal time period because of non-obvious incorrect information provided by Court of First Instance, but outcome inf future cases may be different now that the Court of Appeal has clarified the wording used in Rule 220.1(c) RoP.

Court of First Instance

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).