A guide to the UPC and the UP - Flipbook - Page 230
12-70 The fact that a panel can decide to split or bifurcate the action – i.e. refer the counterclaim to
the central division and proceed with the infringement claim – raises the potential for a socalled “injunction gap”, that is a time gap between an injunction being granted and a decision
on the patent’s validity. 159 The panel will make its decision on how it will proceed under art.33(3)
UPCA once written proceedings have been closed (or earlier if appropriate) and then, as soon as
practicable thereafter, having given the parties an opportunity to be heard, it will make a
decision by order and give brief reasons for its decision. 160
Allocation of a Technically Qualified Judge
12-71 If the revocation action is brought before a local or regional division by way of counterclaim,
the panel will be composed of three legally qualified judges. 161 In the event that the panel
decides not to bifurcate but to hear the revocation counterclaim along with the infringement
action, the panel is obliged to request the allocation from the pool of judges of a technical
judge in accordance with art.18(3) with qualifications and experience in the field of
technology concerned. 162
12-72 Where a technically qualified judge is allocated to the panel, the judge-rapporteur may at any
time consult the technically qualified judge. During the public consultation on the RoP it was
suggested that the technically qualified judge should be of a different nationality to the local
judges in order to promote harmonisation. This suggestion was not incorporated into the RoP.
Defence to Counterclaim, Reply and Rejoinder
12-73 If the SoD includes a counterclaim for revocation, the claimant 163 should within two months
lodge a defence to counterclaim, together with a reply to the SoD and any application to amend
the patent. 164 The defence to the counterclaim for revocation must contain:
– An indication of the facts relied on, including any challenge to the facts relied on by
the defendant; 165
– The evidence relied on, where available, and an indication of any further evidence which
will be offered in support; 166
– The reasons why the counterclaim for revocation should fail, including arguments of law
and any argument as to why any dependent claim of the patent is independently valid; 167
– An indication of any order the claimant and the proprietor will seek in respect of the
revocation action at the interim conference; 168
– The claimant’s and the proprietor’s response to the defendant’s choice of option, if any,
provided for in art.33(3) UPCA relating to the allocation between divisions 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) RoP; 169 and
159
160
161
162
163
164
165
166
167
168
169
See chapter 6 (Jurisdiction Competence and Forum Shopping), paragraphs 6-81 to 6-90.
rr.37(1) and (2) RoP. For closure of the written proceedings see paragraphs 12-133 to 12-136.
arts 8(2) and (4) UPCA.
r.37(3) RoP.
Which expression must include the proprietor if they are different.
r.29(a) RoP. See the full timeline at the Annex to chapter 11.
r.29A(a) RoP.
r.29A(b) RoP. See paragraphs 12-43 to 12-46.
r.29A(c) RoP.
r.29A(d) RoP.
r.29A(e) RoP. See paragraphs 12-69 and 12-70.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 220
