Home » UPC decisions » Local Division » Munich Local Division » LD Munich, 18 January 2024, Order of court of first instance, UPC_CFI_9/2023

LD Munich, 18 January 2024, Order of court of first instance, UPC_CFI_9/2023

3 min Reading time

Key takeaways

The requirements for an extension of the complaint by including claims from a further patent-in-suit are exclusively subject to Rule 263 RoP and not to national provisions. In the present case the plaintiff waited for the outcome of the limitation proceedings before the EPO before extending the statement of claim. The Court considered these requirements as fulfilled as the plaintiff’s earlier assertion of the restricted claims before the termination of the limitation proceedings would have triggered the risk of a further counterclaim for revocation of the second patent. As a separate means of attack, the counterclaim is not limited to a version of the claim that may have been asserted in the infringement
version of the claim. The defendants could therefore have easily challenged the legal validity of the patent-in-suit in its originally granted version with a counterclaim,
although this will no longer be relevant at all. Since no decisions of the UPC on the admissibility of such counterclaims for revocation and their cost implications exist, the patentee did not have to take such a risk.

The Defendants must be granted the same deadline for filing a statement of defence in response to an extension of the action as would have been granted if the action had been filed as a separate action (but not longer). The (non-extended) deadline for filing a defence starts to run when the extension of the action is admitted.


Local Division (Section Munich)

UPC number


Type of proceedings

Infringment Action



  1. NETGEAR Deutschland GmbH (München, DE)
  2. Netgear Inc. (San Jose; US)
  3. Netgear International Limited (Cork, IE)

Defendant: Huawei Technologies Co. Ltd. (Shenzhen, CN)




Body of legislation / Rules

R. 263.1 RoP; R. 333 RoP.

Was the article helpful?



Stay in the loop

Never miss a beat by subscribing to the email newsletter. Please see our Privacy Policy.

* = Required field