A guide to the UPC and the UP - Flipbook - Page 233
12-80 During the drafting of the RoP it was suggested that the permission of the Court should not be
required for the mere deletion of independent or dependant claims. However, this proposal
was rejected as it was considered that, in some cases, the deletion of claims may affect the
interpretation of the remaining claims further up the hierarchy. 182
12-81 R.30 RoP states very generally that the patent proprietor has to explain why the proposed
amendments are valid and satisfy the requirements of arts 84, 123(2) and (3) EPC. 183 Art.84 EPC
states that the claims of a patent must define the matter for which patent protection is sought
and also requires that claims must be clear, concise and be supported by the description.
Art.123(2) EPC states that a patent may not be amended in such a way that it contains subjectmatter which extends beyond the content of the application as filed and art.123(3) EPC states
that a patent may not be amended in such a way as to extend the protection it confers.
12-82 In view of art.65(2) UPCA and the reference to art.138(1) EPC, the proprietor should also
ensure that any proposed amendments fulfil the requirements of arts 52 to 57 and 63 EPC
on patentability.
12-83 Where there are other proceedings involving the patent, the claimant must notify the Court
or the authority in question that the application to amend has been made and provide the
proposed amendments and alternative claim sets. 184
12-84 There is no fee for an application to amend.
Language in which to File the Proposed Amendments
12-85 The proposed amendments must be in the language in which the patent was granted.
Where the language of the proceedings is not the language in which the patent was granted,
the proprietor must also file a translation of the proposed amendments in the language of
the proceedings. 185
12-86 When the patent is a European patent and where requested by the defendant, the applicant
must translate the proposed amendments into the language of: 186
– The defendant’s domicile (if this is in a Member State); or
– The Contracting Member State of the alleged infringement or threatened infringement.
Defence, Reply and Rejoinder
12-87 R.32 RoP specifies the requirements for a defence to an application to amend the patent
and also provides that the defence may contain alternative non-infringement submissions. 187
The defendant must file the defence within two months of service of an application to
amend. 188 The defence must set out the reasons why the defendant opposes the application
to amend the patent, specifically why:
– The proposed amendments are not allowable; and
– The patent cannot be maintained as requested.
182
183
184
185
186
187
188
“Responses to the Public Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received”
6 March 2014, p.58.
r.30(1)(b) RoP.
r.30(3) RoP.
r.30(1)(a) RoP.
r.30(1)(a) RoP.
r.32(2) RoP.
r.32(1) RoP. See the full timeline at the Annex to chapter 11.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 223
