A guide to the UPC and the UP - Flipbook - Page 234
12-88 The consequences of the defendant not filing a defence are not specified but if none is
filed there is a risk that the defendant will be deemed to have consented to the proposed
amendments. However, even if this is the case, the Court will still retain discretion as to whether
the proposed amendments should be granted, for example, in determining if they meet the
requirements of the EPC.
12-89 Where appropriate, the defence to the application to amend may, in addition to any alternative
non-infringement submissions, contain: 189
– An indication of the extent to which revocation of the amended patent is requested; 190
– One or more grounds for revocation, which shall as far as possible be supported by
arguments of law, and where appropriate an explanation of the defendant’s proposed
claim construction; 191
– An indication of the facts relied on; 192
– The evidence relied on, where available, and an indication of any further evidence which will
be offered in support; 193 and
– An indication of any order the defendant will seek during the interim procedure. 194
12-90 After one or more sets of amended claims have been filed, it may also become necessary for
each party to amend or supplement the pleadings it has already filed. How this will work in
practice is not clear: the RoP as they stand do not expressly deal with this point. The judgerapporteur either on application of one of the parties or of the judge-rapporteur’s own
motion 195 will manage the timing of the various filings and how they will interact with the
amendment application itself.
12-91 The proprietor may lodge a reply to the defence to the application to amend the patent within
one month of service of the defence. The defendant may then lodge a rejoinder to the reply
within one month of the service of the reply. The rejoinder must be limited to the matters
raised in the reply. A timeline for making an application to amend the patent, defence,
reply and rejoinder to the reply is shown in figure 12-3.
Action for a Declaration of Non-Infringement
Outline of the Written Procedure for a DNI
12-92 The written procedure for an action for a DNI consists of the following steps which are set out in
figure 12-4 together with the time periods for each step: 196
– Lodging of a statement for a DNI by the claimant;
– Lodging of a SoD by the defendant (which may include a counterclaim for infringement);
and optionally
189
190
191
192
193
194
195
196
r.32(2) RoP referring to rr.44(d) to (h) RoP. As such, in this context, for claimant read defendant.
r.44(d) RoP. See paragraphs 12-115 to 12-117.
r.44(e) RoP.
r.44(f) RoP.
r.44(g) RoP.
r.44(h) RoP.
For example, under r.36 RoP, the judge-rapporteur may, on a reasoned request lodged before the date on which the judgerapporteur intends to close the written proceedings, allow the exchange of further written pleadings and will set the time
period for the exchange. The judge-rapporteur also has extensive case management powers under r.334 RoP.
r.62(1) RoP. The full timeline leading to the oral hearing is at the Annex to chapter 11.
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A Guide to the UPC and the UP 224
