A guide to the UPC and the UP - Flipbook - Page 215
However, other than the language issue, it was not deemed necessary to address issues relating
to any other requirements under r.13 RoP so early in the proceedings. A thorough preliminary
examination of such issues would needlessly complicate and possibly delay the initial stage of
the proceedings before the Court. The Preparatory Committee therefore saw no need to ask
the judge-rapporteur to decide such issues at such an early stage where, primarily, the formal
requirements are being verified.
12-18 Where there is no ground for lodging a preliminary objection, the defendant will have
to address these issues in the SoD. Since failure to comply with the issues set out in paragraph
12-16 would jeopardise the defendant’s position, the judge-rapporteur may use the interim
procedure to determine whether, for example, there is no need to decide the action because
it is manifestly bound to fail or is manifestly inadmissible. 23
Mechanics of a Preliminary Objection
12-19 Any defendant can file a preliminary objection, regardless of whether the objection is filed in
the capacity of a patentee or an alleged infringer. According to the Expert Group of the
Preparatory Committee, preliminary objections need be no more than two pages and should
therefore not involve much preparation time. An overview of the procedure and timelines are
depicted in figure 12-1.
12-20 The question of what language the objection has to be drafted in has proved a difficult one.
In the 14th and 15th drafts of the RoP, r.19(3) RoP allowed a defendant to raise a preliminary
objection in an official language of the defendant’s own Member State. As this was considered
contrary to art.49 UPCA, it was changed in the 17th draft RoP to permit the use of one of the
languages of the EPO. This was also considered difficult to justify under art.49 UPCA. 24
Therefore, r.19(3) RoP, as it is now formulated, simply refers back to r.14 RoP, implying that the
language of proceedings chosen by the claimant should be used.
12-21 According to r.19(2) RoP, a preliminary objection must contain:
– Particulars under r.24(1)(a) to (c) RoP, 25 i.e. identifying the defendant, the defendant’s
representative, the address for service and the action number;
– The decision or order sought by the defendant; 26
– The grounds upon which the preliminary objection is based; 27
– Where appropriate, the facts and evidence relied on; 28 and
– In cases where a request for transfer of the action to the central division pursuant to
art.33(2) UPCA is made, the preliminary objection must also contain all facts and evidence
supporting the existence of the same infringement in three or more regional divisions. 29
12-22 Once the preliminary objection has been filed, the Registry will, as soon as practicable, invite the
claimant to comment on it. 30 The claimant may within 14 days of service of notification of the
preliminary objection, submit written comments or, where applicable, correct any deficiency of
23
24
25
26
27
28
29
30
rr.360 to 362 RoP.
“Table with explanatory notes to the changes made by the Legal Group of the Preparatory Committee in the 17th draft of the
Rules of Procedure” 31 October 2014, p.6.
r.19(2)(a) RoP.
r.19(2)(b) RoP.
r.19(2)(c) RoP.
r.19(2)(d) RoP.
r.19(4) RoP.
r.19(5) RoP.
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A Guide to the UPC and the UP 205
