A guide to the UPC and the UP - Flipbook - Page 237
– The reasons why the performance of a specific act does not, or a proposed act would not,
constitute an infringement of the patent or patents concerned, including arguments of law
and where appropriate an explanation of the claimant’s proposed claim construction; 211
– An indication of the facts relied on; 212
– The evidence relied on, where available, and an indication of any further evidence which will
be offered in support; 213
– An indication of any order the claimant will seek at the interim conference; 214
– Where the claimant assesses that the value of the declaratory action exceeds €500,000,
an indication of the value; 215 and
– A list of the documents, including any witness statements, referred to in the statement
for a DNI together with any request that all or part of any such documents need not be
translated and/or any request to keep documents confidential pursuant to rr.262(1) and/or
262A(1) RoP. 216
Language
12-99 The statement for a DNI, if filed in the central division, must be drawn up in the language of
the patent. 217
12-100 If an infringement action between the same parties has been filed with a local or regional
division and where, as a consequence, the statement for a DNI must be brought before that
same local or regional division, 218 on a literal reading of the RoP, the language mandated is the
language of the patent. 219 But this conflicts with art.49(1) UPCA which states that the language
of proceedings will be an official language of the Contracting Member State hosting the relevant
division or an official language designated by the Contracting Member States sharing a regional
division in which the action is commenced. The provisions in the UPCA will prevail. 220
Payment of Fees for Statement for a DNI
12-101 As in an infringement action, there are two fees payable by the claimant in relation to
the statement for a DNI, a fixed fee and a value-based fee. 221 The amount of the fixed fee is
€11,000 222 and where the value of the action exceeds €500,000, a value-based fee is
also payable. 223
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214
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218
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r.63(e) RoP.
r.63(f) RoP.
r.63(g) RoP. See paragraphs 12-43 to 12-46.
r.63(h) RoP.
r.63(i) RoP.
r.63(j) RoP. Rr.13(2) and (3) RoP relating to the SoC apply mutatis mutandis regarding the supply of copies of documents
referred to in the statement for a DNI and decisions of the judge-rapporteur regarding translations and confidentiality.
See paragraphs 12-38 to 12-40 and 12-47 to 12-49.
art.49(6) UPCA.
art.33(4) UPCA.
r.64 refers to r.45 RoP applying mutatis mutandis and this clearly states in sub-paragraph (1) that the “statement for
revocation shall be drawn up in the language in which the patent was granted”, unless the parties have agreed to taking the
action before a particular division in accordance with art.33(7) UPCA in which case r.14 RoP applies.
art.41(2) UPCA and r.1(1) RoP.
r.70 RoP.
r.370 RoP.
See paragraphs 12-41 and 12-42 and chapter 20 (Court Fees and Recoverable Costs).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 227
