Key takeaways
Proportionality, flexibility, fairness, and equity are criterions for exercising discretion on admission of subsequent application to amend the patent
In exercising its discretion pursuant to R. 30.2 RoP, the court assesses whether an admission of a subsequent application to amend the patent complies with the principles of proportionality, flexibility, fairness, and equity.
Substantial and specific reasoning required for admission of subsequent application to amend patent
If a subsequent application to amend the patent is submitted with the rejoinder brief, the reasoning must indicate which aspects of the adversary party’s submission in the reply are actually new, how they relate to the amendments made in the auxiliary requests, and how the amendments made in the auxiliary requests relate to specific arguments of the adversary.
General statements, according to which the other party presented a far-fetched understanding of the subject matter of the previously submitted auxiliary requests in its reply, do not meet the requirements.
Division
Duesseldorf local division
UPC number
UPC_CFI_733/2024, UPC_CFI_255/2025
Type of proceedings
Application to amend the patent, counterclaim for revocation, infringement proceedings
Parties
TRUMPF Laser- und Systemtechnik SE (Claimant)
IPG Laser GmbH & Co. KG (Defendant)
Patent(s)
EP 2 624 031
Body of legislation / Rules
Rule 30.2 RoP
