A guide to the UPC and the UP - Flipbook - Page 214
to the same patent has already been brought in a local or regional division, in which case it
must be brought in that division. 17
Objections Regarding the Language of the SoC (r.19(1)(c) RoP)
12-13 Proceedings are to be conducted in one of the designated official languages of proceedings
pursuant to art.49 UPCA and r.14 RoP. 18 A SoC that is not drafted in the required language
may be subject to a preliminary objection by the other party. While the use of the language
will automatically be verified by the Registry, 19 the RoP also allow a defendant to raise possible
errors via a preliminary objection, in the event that they have been overlooked.
12-14 A preliminary objection cannot be used by a defendant as a method for seeking a change in
the language of the proceedings to the language of the patent as provided by art.49(5) UPCA,
the option to do so being excluded because r.323 RoP only permits such a request via the SoD.
The application must then be forwarded by the judge-rapporteur to the President of the Court
of First Instance for a decision.
Request for Referral from Regional to Central Division if Infringement has Occurred in the
Territories of Three or More Regional Divisions (r.19(4) RoP)
12-15 In addition to the three grounds for a preliminary objection under r.19(1) RoP, r.19(4) RoP
provides for an additional, very specific, ground for a preliminary objection. If the action is
pending before a regional division but the infringement has taken place in the territories of
three or more regional divisions, the defendant may request a transfer of the action to the
central division pursuant to art.33(2) para.2 UPCA, 20 the request being made by way of a
preliminary objection. As noted above, this is not presently an issue as there is only one
regional division.
Other Grounds
12-16 Even though the precise scope and application of the grounds for a preliminary objection will
have to be determined by the case law of the judge-rapporteurs, it seems that the grounds set
out in the RoP are intended to be exhaustive. This means that some other important issues
relating to the basic admissibility of the claim cannot be raised before the Court at this
preliminary stage of the proceedings. For example:
– A time bar caused by a statute of limitations;
– An objection based on res judicata; 21
– A case of patent abuse (anti-competitive behaviour) or abuse of proceedings;
– A lack of standing to sue, or standing to be sued; and
– Situations where the SoC does not fulfil all the formal requirements of rr.13(1) and (2) RoP.
12-17 In relation to this last point, the Registry does not check all the requirements set out in rr.13(1)
and (2) RoP. 22 Further, it is possible that certain issues might be overlooked by the Registry.
17
18
19
20
21
22
art.33(4) UPCA.
For the complex language regime put in place under the UPCA and RoP, see chapter 11 (Overview of Procedure and General
Procedural Provisions) paragraphs 11-107 to 11-140.
r.16(2) RoP.
See chapter 6 (Jurisdiction, Competence and Forum Shopping) paragraph 6-95.
art.33(3) Brussels I Regulation (recast) provides that a court of a Member State shall dismiss proceedings if the proceedings in
the court of the third state are concluded and have resulted in a judgment capable of recognition. Such a decision does not
result in a determination of lack of jurisdiction, but requires a decision on the merits. This is reflected in r.362 RoP (absolute
bar to proceeding with an action). This goes beyond the purpose of a preliminary objection.
See paragraphs 12-50 to 12-54 for details of the examination of formal requirements by the Registry.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 204
