A guide to the UPC and the UP - Flipbook - Page 220
Parties
12-33 The patent proprietor and in certain circumstances its licensees are entitled to bring actions
before the Court. 52
Contents of the SoC
12-34 The list of information to be contained in the SoC is lengthy as the claimant is required to set
out its case in full at the outset. Note that the RoP set out the minimum requirements of the
SoC (and other pleadings); they do not preclude the claimant from including other information
in the SoC if the claimant wishes to do so. R.13(1)(a) to (q) RoP states that the SoC must contain
the following:
– The name of the claimant (and, where the claimant is a corporate entity, the location of its
registered office) 53 and of the claimant’s representative; 54
– The name of the defendant and where the defendant is a corporate entity, the location of its
registered office; 55
– Postal and electronic addresses for service on the claimant and the names of the persons
authorised to accept service; 56
– Postal and, where available, electronic addresses for service on the defendant and the
names of persons authorised to accept service, if known; 57
– Where the claimant is not the proprietor or not the only proprietor of the patent 58
concerned, postal and where available electronic addresses of the persons authorised to
accept service, if known; 59
– Where the claimant is not the proprietor of the patent concerned, evidence to show the
claimant is entitled to commence proceedings under arts 47(2) and (3) UPCA; 60
– Details of the patent concerned, including the number; 61
– Where applicable, information about any prior or pending proceedings relating to the
patent concerned including any action for revocation or a declaration of non-infringement
pending before the central division and the date of any such action, the EPO or any other
court or authority; 62
52
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54
55
56
57
58
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60
61
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art.47 RoP. See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-45 to 11-47 for a
description of when a licensee may commence proceedings and paragraphs 11-48, 11-49, 11-58 and 11-59 for information on
actions commenced by a plurality of claimants, or in respect of a plurality of patents or against a plurality of defendants.
The requirement to include the registered office of corporate entities was introduced from the 16th draft of the RoP to avoid
confusion in situations where the same corporate name might refer to companies in more than one country, for example
“[company] SA” could exist in both France and Belgium.
r.13(1)(a) RoP. The parties must be represented by lawyers authorised to practise before a court of a Contracting Member
State or European patent attorneys who are entitled to act as professional representatives before the EPO and who have
appropriate qualifications such as a European Patent Litigation Certificate (art.48 UPCA). See chapter 23 (Legal
Representation, Privilege and Code of Conduct) paragraphs 23-01 to 23-09.
r.13(1)(b) RoP.
r.13(1)(c) RoP.
r.13(1)(d) RoP.
The RoP refer to one patent, but actions with more than one patent are not excluded.
r.13(1)(e) RoP.
r.13(1)(f) RoP. Art.47 UPCA sets out the parties entitled to bring actions before the Court, namely, the patentee and licensees.
See paragraph 12-33.
r.13(1)(g) RoP.
r.13(1)(h) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 210
