A guide to the UPC and the UP - Flipbook - Page 228
Counterclaim for Revocation
Patent Proprietor Must be a Party
12-62 If the SoD includes an assertion that the patent alleged to be infringed is invalid, the SoD must
include a counterclaim for revocation of the patent. R.25(1) RoP specifically refers to the
counterclaim being brought against the proprietor of the patent, 143 which is straightforward if
the claimant is the patent proprietor. However, if the infringement action has been brought by
a licensee, the defendant will have to bring a counterclaim for revocation against the patent
proprietor. 144
12-63 This is reflected in the requirements for the contents of a counterclaim for revocation at
r.25(1)(h) RoP which states that, insofar as the proprietor of the patent is not the claimant in the
infringement proceedings, the defendant must include in the counterclaim the information
required by r.13(1)(b) and (d) RoP in respect of the proprietor, namely (1) the name of the
proprietor and, where it is a corporate entity, the location of its registered office, and (2) the
postal and, where available, electronic addresses for service on the proprietor and the names of
the persons authorised to accept service, if known.
Contents of the Counterclaim for Revocation
12-64 In addition to the information required by r.25(1)(h) RoP (see paragraph above), the information
that must be included in the counterclaim is set out in r.25(1)(a) to (g) RoP as follows:
– An indication of the extent to which revocation of the patent is requested; 145
– One or more grounds for revocation, which shall as far as possible be supported by
arguments of law and where appropriate an explanation of the defendant’s proposed
claim construction; 146
– An indication of the facts relied on; 147
– The evidence relied on, where available, and an indication of any further evidence which will
be offered in support; 148
– An indication of any order the defendant will seek during the interim procedure; 149
– A statement of the defendant’s position, if any, on the options provided for in art.33(3)
UPCA relating to the allocation of the infringement and revocation actions to the same or
different divisions and whether, if the actions are bifurcated, a stay is appropriate under
r.37(4); 150 and
– A list of the documents, including any witness statements, referred to in the counterclaim
for revocation together with any request that any such documents need not be translated. 151
Note that there appears to be an omission in this rule in that it is not consistent with the
contents of the SoC and SoD as it does not include a provision for requests for confidentiality
143
144
145
146
147
148
149
150
151
In accordance with r.42 RoP, the action is to be directed against the patent proprietor. See chapter 11 (Overview of Procedure
and General Procedural Provisions) paragraphs 11-47 and 11-55 to 11-57 for the reliance that can be placed on the records
held at national patent offices in relation to the name of the proprietor.
art.47(5) UPCA.
r.25(1)(a) RoP. See the discussion in paragraphs 12-115 to 12-117.
r.25(1)(b) RoP.
r.25(1)(c) RoP.
r.25(1)(d) RoP.
r.25(1)(e) RoP. See also r.104(e) RoP.
r.25(1)(f) RoP. See paragraphs 12-69 and 12-70.
r.25(1)(g) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 218
