A guide to the UPC and the UP - Flipbook - Page 178
– Action against a decision of the EPO in carrying out the tasks referred to in art.9 Unitary
Patent Regulation. 51
11-28 There are some differences in phases and timelines of these actions. However, in general,
the written procedure consists of the exchange of written pleadings comprising a SoC, 52
SoD, and optionally also a reply to the SoD and a rejoinder to the reply. Detailed timelines
for an infringement action, an action for a DNI and a revocation action are set out in the
Annex to this chapter.
11-29 Cases are front-loaded with the parties expected to lodge detailed SoC and SoD containing
all the evidence relied upon, where available, and an indication of any further evidence which
will be offered in support. 53 A claimant will need to consider carefully what evidence should be
produced with the SoC and what can be presented later through, for example, statements
from witnesses and expert reports. A discussion of the strategic considerations involved can be
found in chapter 17 (Evidence). 54 A claimant must also consider in which division to file its SoC,
that is if it has a choice, 55 the language in which it will file its SoC 56 and what, if any, translations
it will need to lodge with the Registry in order for the SoC to be served. The SoC is lodged at the
Registry or sub-registry in electronic form 57 and the necessary fee has to be paid. 58
11-30 The Registry is responsible for serving the SoC on the defendant, but before doing so, will
examine it for formal requirements and will notify the claimant of any points of non-compliance
with the requirements of the RoP and allow the deficiencies to be corrected. 59 The Registry
records the action in the register and assigns it to a panel. 60 A judge-rapporteur, one of the
legally qualified judges on the panel, is then designated to the case. 61 The judge-rapporteur is
responsible for case management during the written and interim procedures and the role is
thus a very important one. 62
11-31 Following service, a defendant has three months to file a SoD in an infringement action, 63 two
months in a revocation action (which may also include an application to amend the patent) 64
and two months in an action for a DNI. 65 The defendant, like the claimant, must include the
evidence relied upon, where available, in the SoD. The defendant can also, within one month,
lodge a preliminary objection by which it can challenge the jurisdiction and competence of the
Court or the division indicated by the claimant, or the language of the claimant’s statement or
application, 66 but this does not stay or delay its other deadlines.
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The tasks set out in art.9 Unitary Patent Regulation include (among others) administering requests for unitary effect by
proprietors of European patents, setting up and maintaining a register for Unitary patents within the EPO’s patent register,
receiving and registering statements on licensing and publishing translations under the Translation Regulation. See chapter 2
(Patent Applications and Securing Grant of the Unitary Patent) paragraphs 2-81 to 2-117 for details of actions against
decisions of the EPO.
SoC is used in this chapter in the same way as in r.270(2) RoP to refer to all originating pleadings in actions that fall under the
exclusive competence of the Court.
For example, see r.13(1)(m) RoP, but the wording is common to all the rules listing the necessary contents of the various
written pleadings.
See paragraphs 17-35 to 17-40.
See chapter 6 (Jurisdiction, Competence and Forum Shopping), in particular the section on the competence of the divisions
starting at paragraph 6-41.
See paragraphs 11-107 to 11-130 in relations to language requirements.
r.4 RoP.
See chapter 20 (Court Fees and Recoverable Costs) paragraphs 20-06 to 20-36 for the calculation of Court fees.
r.16 RoP.
r.17 RoP.
r.18 RoP.
r.331(1) RoP.
r.23 RoP. See the Annex to this chapter for the timeline for an infringement action.
rr.49 and 50 RoP. See the Annex to this chapter for the timeline for a revocation action.
r.67 RoP. See the Annex to this chapter for the timeline for a DNI action.
rr.19, 47, 48 and 63 RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 168
