A guide to the UPC and the UP - Flipbook - Page 212
Procedure When the Defendant Raises a
Preliminary Objection
Introduction
12-04 One of the first steps that a defendant can take when confronted with an action before the
Court is to lodge a preliminary objection in accordance with rr.19 to 21 RoP. A preliminary
objection can be made in response to any of the following:
– An infringement action; 1
– A revocation action; 2 and
– An action for a DNI. 3
12-05 If a defendant fails to lodge a preliminary objection within one month of service of the SoC, 4
or statement of revocation as appropriate 5 it shall be treated as having submitted to the
jurisdiction and competence of the division chosen by the claimant. 6 Therefore, a defendant
is obliged to bring all defences relating to jurisdiction or competence, including lis pendens,
within one month of the service of the SoC by way of a preliminary objection, otherwise it
will be barred from raising them later.
Basis for Filing a Preliminary Objection
12-06 A preliminary objection can be based on any of the grounds listed in rr.19(1) and 19(4) RoP:
– Absence of jurisdiction of the Court or lack of competence of the Court (including any
objection that an opt-out applies to the patent that is the subject of the proceedings);
– Lack of competence of the division indicated by the claimant;
– Objections regarding the language of the SoC; and
– Request for referral from a regional to the central division if infringement has occurred in
the territories of three or more regional divisions (although not presently an issue as there is
only one regional division).
Absence of Jurisdiction of the Court or Lack of Competence of the Court (r.19(1)(a) RoP)
12-07 The jurisdiction of the Court is determined in accordance with the Brussels I Regulation
(recast). 7 A preliminary objection based on the absence of jurisdiction could be raised where
there is no basis for bringing an action under the Brussels I Regulation (recast) or where there is
a situation of lis pendens 8 requiring the Court to decline jurisdiction. Such a situation could
arise where, for example, during the transitional period a patentee starts an infringement
action in a national court of a Contracting Member State against a defendant for infringement
by a particular product of a European patent which has not been opted out. The defendant
responds to the action by issuing proceedings before the Court, claiming that the patentee’s
1
2
3
4
5
6
7
8
rr.19 to 21 RoP.
r.48 referring to rr.19 to 21 RoP.
r.66 referring to rr.19 to 21 RoP.
r.19(1) RoP.
r.48 referring to r.19(1) RoP.
r.19(7) RoP.
Or, where appropriate, the Lugano Convention (art.31 UPCA). See chapter 6 (Jurisdiction, Competence and Forum Shopping)
paragraphs 6-04 to 6-40.
art.29 Brussels I Regulation (recast).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 202
