A guide to the UPC and the UP - Flipbook - Page 229
of documents. However, even if the request made in the SoD 152 does not cover the
documents in the counterclaim for revocation, there is nothing to preclude an application
being made under r.262(1) and/or r.262(A)(1) RoP at this stage.
12-65 As with the SoD, copies of each of the documents referred to in the counterclaim for revocation
have to be provided. 153
Payment of Fees for the Counterclaim for Revocation
12-66 The formal requirements for the counterclaim for revocation will be examined by the Registry
along with the SoD, which will include, in relation to the former, checking that the correct
fee has been paid. 154 The fee for a counterclaim for revocation is the same fee as for the
infringement action, but is capped at €20,000, which is the fee for a standalone revocation
action. 155 The counterclaim is not deemed to have been lodged until the fee has been paid. 156
12-67 There has been some debate over whether it is fair to require payment of a fee for a
counterclaim for revocation and several consultation responses have raised this issue.
However, the Expert Group of the Preparatory Committee considered that because the
revocation counterclaim is a standalone action that would survive withdrawal of the
infringement action, it is no different to a revocation action and fees should be paid accordingly.
Service of Counterclaim for Revocation
12-68 The Registry will serve the counterclaim for revocation and the SoD on the claimant. In cases
where the claimant is not the proprietor or not the only (other) proprietor of the patent, the
Registry will as soon as practicable serve 157 a copy of the counterclaim for revocation on the
proprietor/other proprietor(s). 158 The proprietor in question becomes a party to the revocation
proceedings and is treated as a defendant in subsequent proceedings.
Bifurcation
12-69 Where a counterclaim for revocation is brought in an infringement action, the local or regional
division has the discretion to do one of the four things set out in art.33(3) UPCA:
– Keep both aspects of the case i.e., proceed with both the infringement action and the
revocation counterclaim;
– Refer the counterclaim to the central division and proceed with the infringement claim;
– Refer the counterclaim to the central division and suspend the infringement claim; or
– If the parties agree, refer the entire case to the central division.
152
153
154
155
156
157
158
r.24(j) RoP.
r.25(2) RoP.
r.27(1)(b) referring to r.26 RoP.
r.370 RoP. See chapter 20 (Court Fees and Recoverable Costs) paragraph 20-14 and table 20-4.
r.26 referring to r.15(2) RoP.
r.271 RoP on the service of the SoC applies mutatis mutandis (r.25(2) RoP). See chapter 11 (Overview of Procedure and
General Procedural Provisions) paragraphs 11-89 to 11-106.
r.25(2) RoP. This rule does not mention whether a claimant, if not the proprietor, is also a party to the counterclaim to
revocation but it is assumed that this is the case.
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