A guide to the UPC and the UP - Flipbook - Page 235
– Lodging of a statement of reply by the claimant; and
– Lodging of a rejoinder to the reply by the defendant.
12-93 The action for a DNI can be combined with an action for revocation, provided that the fees for
both actions are paid. 197
Competent Divisions
12-94 If no infringement action is pending prior to the action for a DNI, the action must be brought
before the central division. If, however, an action for infringement between the same parties
relating to the same patent has been filed with a local or a regional division, an action for DNI
may only be brought before that same local or regional division (most probably this will be
done by way of counterclaim to the infringement action and lodged together with the
defence). 198 Alternatively, the parties may agree which division will hear the action. 199
12-95 The defendant to an action for a DNI is always free to lodge a counterclaim for infringement
with the SoD in the proceedings before the central division, or to bring an infringement action
before a local or regional division. If the defendant takes the latter route within three months of
the date on which the action for a DNI “was initiated” 200 before the central division, the action
for the DNI must be stayed. 201 If the time period is longer than three months, there will be no
automatic stay, but the presiding judges from the divisions concerned will consult and agree on
future progress, including the possibility of a stay. 202
Statement for a DNI
Parties
12-96 Before initiating an action for a DNI, unless the patent proprietor (or licensee entitled to bring
proceedings) 203 has asserted that the relevant act is an infringing act, the person wishing to
bring the action must give prior notice to the patent proprietor (or to the licensee) requesting a
written acknowledgement that the performance of a specific or proposed act does not or would
not constitute an infringement of the patent. That person must also provide full particulars in
writing of the act in question. If the proprietor or the licensee refuses or fails to give such
acknowledgement within one month, the person can then commence the action for a DNI.
Alternatively, an action for a DNI can be brought without giving prior notice if the patent
proprietor or licensee has asserted that the act is an infringement. 204
12-97 The action for a DNI should be directed against either the proprietor or the licensee who
asserted the patent or refused or failed to give the acknowledgment. 205
197
198
199
200
201
202
203
204
205
r.77 RoP. See paragraphs 12-107 to 12-129 for further information on revocation actions.
art.33(4) UPCA. This rule mirrors CJEU’s decision in Folien Fischer v Ritrama (C-133/11) ECLI: EU:C:2012:644.
art.33(7) UPCA.
art.33(b) UPCA. The date that the action “was initiated” is the date of receipt attributed to the statement for the DNI by the
Registry and is the date on which the action is regarded as having been commenced before the Court (r.17(4) RoP).
art.33(6) UPCA and r.76 RoP.
art.33(6) UPCA and rr.76(3) and 295(f) RoP.
Under arts 47(2) or (3) UPCA.
r.61(1) RoP.
r.61(2) RoP. See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-47 and 11-55 to 11-57
for the reliance that can be placed on the records held by the national patent offices in relation to the name of the proprietor.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 225
