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1. Key takeaways
Alignment of defenses in different
proceedings
In a case in which the patent proprietor applied to amend the
patent in due time (that is, within the time period for lodging the
defence to revocation) and then requested a change of this original
application within his next deadline (rejoinder to the reply to the
defence and reply to the defence to the application to amend the
patent) the admissibility of the new amendments (e.g. auxiliary
requests) falls under Rule 50 (2) RoP.
Accordingly and under Rule 30 (2) RoP, any “subsequent
request” to amend the patent may only be admitted into the
proceedings only with the permission of the Court.
In the present case, the patent proprietor had justified its
subsequent request to amend the patent with the fact that in
parallel proceedings (before the Munich Local Division, in which
the patent proprietor filed infringement action against affiliated
companies of the claimant) the defendants had lodged counterclaims
on grounds which were not identical to those of the current
revocation action. As these ground had been filed only after its
defence in the revocation proceedings, the patent proprietor argued
that he needed to align the proposed amendments in both proceedings
for reasons of consistency and procedural economy.
The CD Paris did not find this convincing and rejected the
patent prorietor’s application for leave to amend the case. It
reasoned that the Unified Patent Court framework does not exclude
that a patent may be attacked by different subjects, with different
claims, on different grounds and before different divisions. In
such situations, the purpose of consistency of the decisions is
safeguarded by a set of procedural tools (such as Art. 33 (3) UPCA:
referral of the counterclaim to the central division or suspension
of the infringement case). Therefore, the Unified Patent Court
framework did not require that the patent proprietor has all its
defences in the different proceedings in which its patent is
attacked aligned.
Scope of Rule 263 RoP
In addition, the CD Paris found that the request to replace the
original application to amend the patent with a new set of
amendments is outside the scope of Rule 263 RoP.
2. Division
CD Paris
3. UPC number
UPC_CFI_255/2023
4. Type of proceedings
Central Revocation Action.
5. Parties
Applicant: Meril Italy srl – Piazza Tre Torri 2 20145
Milano Italy.
Respondent: Edwards Lifesciences Corporation, California,
USA.
6. Patent(s)
European patent n° EP 3646 825
7. Body of legislation / Rules
Rules 30, 50(2), 263 (1), 264, 340(1) RoP.
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