A guide to the UPC and the UP - Flipbook - Page 231
– A list of the documents, including any witness statements, referred to in the defence
to the counterclaim together with any request that all or part of any such document
shall not be translated and/or any request pursuant to rr.262(1) and/or.262(A) RoP
regarding confidentiality. 170
12-74 Within two months of service of the defence to counterclaim (rather than the single month if
there was no counterclaim), the defendant may lodge a reply to the defence to counterclaim,
together with any rejoinder to the reply to the SoD. Within one month of the service of the
reply, the claimant/proprietor may lodge a rejoinder to the reply. The rejoinder must be limited
to a response to the matters raised in the reply. 171
Application to Amend the Patent
12-75 Where the claimant has initiated an infringement action and the defendant has counterclaimed
for revocation, the proprietor of the patent has the opportunity to file an application to amend
the patent. Under r.30 RoP, an application to amend may be included with the defence to the
counterclaim for revocation which means it should be filed by the proprietor within two months
of service of the statement for revocation. 172 The patent claims, specification or both the claims
and specification of the patent can be amended. 173
Figure 12-3: Procedure and Timeline for Making an Application to Amend
a Patent
Month
0
Prop: application
to amend patent (r.49(2)(a))
1
170
171
172
173
2
Def: defence to application
to amend patent (rr.32(1), 55)
3
Prop: reply to defence (rr.32(3), 55)
4
Def: rejoinder to reply (rr.32(3), 55)
r.29A(f) RoP. Rr.13(2) and (3) RoP relating to the SoC apply mutatis mutandis regarding the supply of copies of documents
referred to and decisions of the judge-rapporteur regarding translations and confidentiality. See paragraphs 12-38 to 12-40
and 12-47 to 12-49.
rr.29(d) and (e) RoP. See figure 12-2.
r.49 RoP. See figure 12-3 for the specific timeline for making an application to amend and the Annex to chapter 11 for the full
timeline for an infringement action.
r.30(1)(a) RoP.
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A Guide to the UPC and the UP 221
