LD Munich, September 25, 2024, Procedural Order on a Counterclaim for revocation – Standing to be sued, UPC_CFI_114/2024 UPC_CFI_448/2024

A common situation in patent litigation is that a patent has (allegedly) been assigned from one legal entity (assignor) to another (assignee) and that the assignee asserts the patent before being entered as proprietor into the register. This decision addresses the question who the alleged infringer (defendant) can sue in a counterclaim for revocation.

According to R. 42 RoP:

1. Any action for the revocation of a patent shall be directed against the proprietor of the patent.

2. If the action for revocation is directed against the proprietor 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 practicable after service of the Statement for revocation apply to the Court pursuant to Rule 305.1(c) for the substitution of the registered proprietor by the Rule 8.5 proprietor.

R. 8 RoP specifies:

5. Subject to paragraph 6, for the purposes of proceedings under these Rules:

(a) in relation to the proprietor of a European patent, the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent has been validated shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State (hereinafter “national patent register”); and

(b) in relation to the applicant for a European patent, the person entitled to be registered as applicant whether or not such person is in fact recorded as such in the European Patent Register kept by the European Patent Office.

(c) For the purposes of paragraph 5, there shall be a rebuttable presumption that the person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered as proprietor or applicant as the case may be. 

6. For the purposes of proceedings pursuant to Rules 42 and 61 in relation to a European patent, the person shown in the national patent register [Rule 8.5(a)] as the proprietor shall be treated as such for each Contracting Member State or, as far as no such person is registered in a national patent register, the last person shown recorded as proprietor in the European Patent Register kept by the European Patent Office.

The defendant had filed a counterclaim for a declaration of invalidity of the patent in suit against Heraeus Precious Metals GmbH & Co. KG on the grounds that, at the time of filing the counterclaim for revocation, this legal entity was entered in the register as the patent proprietor.

The plaintiff is of the opinion that the counterclaim should have been filed against the substantive patent proprietor, Heraeus Electronics GmbH & Co. KG, and that the counterclaim is therefore inadmissible and without legal basis.

The LD Munich found that the counterclaim for revocation can be directed both against the Rule 8.6 holder, i.e. the registered proprietor, as well as against the Rule 8.5(a) or (b) proprietor, i.e. the substantive proprietor. In the event these are different, the registered proprietor who is not also the substantive proprietor must file an application under Rule 305.1(c) of the Rules of Procedure as soon as possible. According to this provision, the court may, at the request of a party, order a person to replace another party.

The LD Munich reasoned that the purpose of this rule would be to exempt the defendant from the assessment the substantive entitlement to the patent in suit for the purposes of bringing a counterclaim against the patent in suit. If the counterclaim for revocation is filed against the registered proprietor, the counterclaim for revocation is always filed against the “correct” counter-defendant. Alternatively, he can counterclaim for revocation against the substantively entitled party.