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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