A guide to the UPC and the UP - Flipbook - Page 218
12-30 If the SoD includes a counterclaim for revocation then the claimant’s statement of reply is to
include a defence to the counterclaim (and may include an application to amend the patent). 41
The defendant may then lodge a reply to such defence 42 (and must lodge any defence to the
application to amend). 43 The claimant may then lodge a rejoinder to such reply 44 (including a
reply to any defence to an application to amend – to which the defendant may then lodge a
rejoinder). 45 These steps and the time periods within which they should be taken are set out in
figure 12-2 and the complete timeline leading to the oral hearing is at the Annex to chapter 11.
Competent Divisions
12-31 In certain situations, the claimant may have considerable choice as to where to start
proceedings as a number of divisions may have competence. Unless the parties agree on a
division, 46 art.33(1) UPCA provides that a claimant may bring an infringement action in: 47
– The local division of the Contracting Member State where there has been actual or
threatened infringement (or the regional division in which that Contracting Member
State participates);
– The local division of the Contracting Member State where the defendant, or if there are
multiple defendants one of them has its residence, principal place of business or, in the
absence of either, place of business; (or the regional division in which that Contracting
Member State participates);
– The central division where the Contracting Member State in which there has been actual or
threatened infringement does not host a local division or participate in a regional division; or
– If the defendant(s) have no residence, principal place of business or place of business in
any Contracting Member State, then the place of infringement as set out above or the
central division.
41
42
43
44
45
46
47
r.12(3)(a) RoP.
r.12(3)(b) RoP.
r.12(4) RoP.
r.12(3)(c) RoP.
r.12(4) RoP.
art.33(7) UPCA.
For further details see chapter 6 (Jurisdiction, Competence and Forum Shopping) paragraphs 6-41 to 6-48 and figure 6-1
entitled “Where to file”.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 208
