Rule 61 – Declaration of non-infringement

1. A declaration that the performance of a specific act does not, or a proposed act would not, constitute an infringement of a patent may be made by the Court in proceedings between the person doing or proposing to do the act and the patent proprietor or licensee entitled to commence infringement proceedings pursuant to Article 47 of the Agreement, if the patent proprietor or such licensee has asserted that the act is an infringement, or, if no such assertion has been made by the patent proprietor or licensee, if:

(a) that person has applied in writing to the proprietor or licensee for a written acknowledgment to the effect of the declaration claimed, and has provided him with full particulars in writing of the act in question; and

(b) the proprietor or licensee has refused or failed to give any such acknowledgment within one month.

2. The action for a declaration shall be directed against the proprietor of the patent or the licensee who has asserted an infringement or refused or failed to give an acknowledgement pursuant to paragraph 1(b).

3. If the action for a declaration of non-infringement is directed against the proprietor of the patent in accordance with Rule 8.6 (“the registered proprietor”) but the registered proprietor is not a proprietor within the meaning of Rule 8.5(a) or (b) (“the Rule 8.5 proprietor”) each such registered proprietor shall as soon as possible after service of the Statement for a declaration of non-infringement apply to the Court pursuant to Rule 305.1(c) for the substitution of the registered proprietor by the Rule 8.5 proprietor.

Case law

Court of  First Instance

IPPT20260115, UPC CFI, LD Düsseldorf, Ona Patents v Google
Patent valid (Article 65 UPCA) but not infringed. (Article 25 UPCA) The law prioritizes registration over the entitlement where a claimant wants to obtain a decision to remove the effects of a granted patent (Rule 8.6 RoP, Rule. 25 RoP) .  It is for the registered proprietor and the entitled proprietor to apply to the Court for the substitution of the registered proprietor in a situation of non-identity (Rule 42.2, 61.2 RoP). Different situation in a case of a counterclaim of revocation where entitlement of the registered person is effectively rebutted in the infringement action and the question of the entitlement is decisive for the infringement. 

IPPT20251010, UPC CFI, LD The Hague, HL Display v Black Sheep Retail
Counterclaim for declaration of non-infringement inadmissible in the absence of a prior assertion of infringement with respect to Product 2. Such assertion may not be deduced from the mere fact that the patent was invoked with respect to a different product (R. 61.1 RoP). The relevant date here when all requirements of R.61.1 (a) and (b) should be fulfilled, is the launch of the counterclaim. 
 

IPPT20240516, UPC CFI, CD Paris, Stäubli Tec-Systems
A prior written notice is no prerequisite for a revocation action (R. 42 RoP, R. 61.1 RoP) but the absence thereof may have consequences for the allocation of legal costs between the parties if the patent proprietor immediately acknowledges or surrenders the patent in response to the action for a declaration of invalidity. (Article 69 UPCA).  If there is no need to adjudicate (R. 360 RoP) the legal costs shall be determined by the full panel (R. 118.5 RoP). In case of a patent waiver Rule 370.9(c)(i) RoP, providing for a 60% refund of Court fees, applies by analogy.