A guide to the UPC and the UP - Flipbook - Page 232
The Application is Made by the Proprietor
12-76 R.30(1) RoP makes it clear that it is the proprietor of the patent who must make the application
to amend the patent. Where there is more than one proprietor, 174 although the RoP are silent
on the point, it appears that an application to amend will need to be made either by or on
behalf of all the proprietors. This conclusion would be in line with the provisions relating to
limitation actions under the EPC 175 where the request for limitation will be rejected by the EPO
as inadmissible if the requester is not the proprietor for all EPC contracting states and does not
have the consent of the other proprietors. 176
Timing
12-77 It is important to note that the application to amend is the only opportunity for the proprietor
to file one or more amended sets of claims which will definitely be considered by the Court.
Any subsequent request to amend the patent may only be admitted into the proceedings with
the permission of the Court. 177 Accordingly, it is fully within the discretion of the Court to either
admit or refuse further amendments. It has yet to be seen how strictly the Court will apply this
discretion.
12-78 Any subsequent application will still need to satisfy the original requirements listed in r.30(1)
RoP. 178 It would also be advisable to include an explanation as to why the amendment was not
filed within the original timeframe and why the late application would not unreasonably hinder
the other party in its conduct of the action. 179 In theory, any such application to amend can be
made any time up to and including the oral hearing. However, the later the application to
amend the patent is filed, the more difficult it will be to convince the Court to permit the
application to proceed.
Contents of the Application to Amend
12-79 The application to amend the patent must include: 180
– The proposed amendments of the claims of the patent and/or specification, including where
applicable and appropriate one or more alternative sets of claims i.e. auxiliary requests;
– An explanation as to:
– Why the amendments satisfy the requirements of arts 84, 123(2) and (3) EPC;
– Why the proposed amended claims are valid;
– Why the proposed amended claims are infringed; and
– An indication whether the proposed amendments are conditional or unconditional. If they
are conditional, they must be reasonable in number in the circumstances of the case. 181
The case law will have to develop guidelines as to what is a reasonable number.
174
175
176
177
178
179
180
181
Assigning ownership of a European patent application in one or more Contracting Member States is not a bar to unitary effect
being granted (explanatory note II.6 to r.5 Unitary Patent Rules).
r.92(2)(a) and (c) EPC Implementing Regulation. The proprietor making the request must indicate the EPC contracting states
for which it is the proprietor of the patent and, where it is not, provide evidence that it is entitled to act on behalf of the other
proprietor(s).
Part D chapter X para.2.2(vi) EPC Guidelines for Examination.
r.30(2) RoP.
See paragraph 12-79.
See r.263 RoP relating to leave to request a change to a claim or amend a case. See paragraphs 12-130 to 12-132.
r.30(1)(a) to (c) RoP.
r.30(1)(c) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 222
