Key takeaways
Request to further “amend the case” or “amend the patent” by defendant in revocation action due to invalidity attacks brought in the parallel counterclaim for revocation was rejected
Defendant in revocation action applied to amend the patent in due time, i.e, within the time period for lodging the defence to revocation. It then requested a change of the original application to amend the patent and referred to Rule 263.1 RoP (leave to amend its case) and R. 30.2 RoP (permission to amend the patent). According to Defendant, an earlier submission was not possible because it was a reaction to a parallel counterclaim for revocation. The amendment should be accepted for reasons of consistency and procedural economy. The CD Paris rejected the request.
The request to replace the original application to amend the patent with a new set of amendments does not fall under Rule 263 RoP but under Rule 50(2) RoP in conjunction with Rule 30 (2) RoP
Rule 263 RoP is not applicable since the request to replace the original application to amend the patent with a new set of amendments does not pertain to a claim. The expression “amend its case” must be interpreted together with the previous expression “change its claim” as they constitute a hendiadys which relates to any modification to the case. It covers the submission of new or different grounds of the claim (para 21 et seq.). The request falls under Rule 50 (2) RoP in conjunction with Rule 30.2 RoP.
Rule 30 (2) RoP confers to the Court the discretionary powers to admit an amendment of the patent even after a previous application to amend that patent has been submitted and even after the expiration of the time period for amending the patent
While using these discretionary powers the UPC judges have to observe the principles of proportionality, flexibility, fairness and equity (see preamble 2 and 4 RoP and UPC CFI 412/2023 CD Paris, order of 9 February 2024).
A new amend of the patent due to a parallel action of counterclaim is not justified by purposes of consistency and procedural economy.
The UPCA provides for a set of tools that allows to handle the risk of inconsistent decisions like Art. 33 (3) UPCA and R. 295 (m) RoP.
The UPC 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 a situation the purpose of consistency of the decisions is safeguarded by the mentioned tools and does not require that the patent proprietor has all its defences in the different proceedings in which its patent is attacked aligned.
The purpose of consistency of the decisions may come into play only where those decisions address the same subject-matter. This was not the case here, since the further amendment of the patent was a reaction to grounds that were raised in different proceedings and were thus outside the scope of the revocation proceedings.
The principle of procedural economy must be interpreted as to refer to each single proceedings.
This does not preclude the parties from agreeing, during the proceedings, on a new set of amendments that may incorporate some of those previously rejected by this order, if such amendments align with their best interests.
Rule 263 RoP and Rule 30 RoP must be interpreted in a way that a party may request a leave or a permission required by the Rules of Procedure and lodge the consequent application at the same time by filing only one pleading, especially in a situation where a strict time period comes into play.
Division
Panel 2 of the Central Division – Paris Seat
UPC number
UPC_CFI_255/2023
Type of proceedings
Revocation action
Parties
Applicant: Meril Italy srl
Respondent: Edwards Lifesciences Corporation
Patent(s)
EP 3646 825
Body of legislation / Rules
Rule 30 RoP, Rule 50 (2) RoP, Rule 263 (1) RoP, Rule 295 (m) RoP, Art. 33 (3) UPCA
