A guide to the UPC and the UP - Flipbook - Page 238
Examination of the Formal Requirements for a DNI
12-102 The next steps include the examination of the formal requirements in the statement for a DNI,
recording the statement in the register and assigning it to a panel. 224 Because of the crossreference in the rules to following the procedure in an infringement action, the list of formal
requirements that will be examined by the Registry is not entirely clear; but taking a sensible
approach, it is more than likely that the requirements in rr.63(a) to (d) RoP will be examined
together with querying whether the patent has been opted-out, checking that copies of all the
documents referred to in the statement for the DNI have been sent, the correct language has
been used and the correct fee paid. 225 Assuming the formal requirements are met, the action is
recorded in the register, assigned to a division of the Court, 226 and one of the legal judges of the
panel is designated as the judge-rapporteur. 227
Service on the Defendant
12-103 The Registry serves the statement for a DNI on the defendant as soon as practicable. 228 If the
proprietor of a European patent is named as the defendant and is, in fact, not the person
entitled to be registered as the proprietor of a European patent (although their name was on
the national patent register as the proprietor) the defendant must, as soon as possible, apply
to the Court to be substituted by the person entitled to be registered as the proprietor. 229
Defence to Statement for a DNI, Reply and Rejoinder
12-104 After service of the statement for a DNI, the defendant must lodge:
– If desired, a preliminary objection within one month of service; 230 and
– A defence within two months of service of the statement for a DNI 231 that may include an
infringement claim.
12-105 The timeline for the written procedure is at figure 12-4 and the full timeline leading to the oral
hearing is at the Annex to chapter 11. The contents of the defence to the statement for a DNI
are specified by reference to the contents of the SoD to an infringement action. 232 The defence
is also formally examined in the same manner as a SoD to an infringement action. 233
12-106 The claimant may lodge a reply to the defence to the statement for a DNI within one month of
its service. 234 The defendant may lodge a rejoinder to the reply within one month of service of
the reply. The rejoinder is limited to the matters raised by the claimant in the reply. 235
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r.65 RoP refers to rr.16 to 18 RoP.
See paragraphs 12-50 to 12-54 in relation to the examination of the SoC and the consequences if the requirements are not
met.
r.17 RoP. For the sometimes complicated rules for assigning cases in the central division, see paragraphs 12-123 to 12-125
and table 12-1 and figure 12-6.
r.18 RoP. See paragraph 12-57.
r.6(1) RoP. Service is affected in accordance with part 5, ch.2 RoP (rr.270 to 279 RoP). See chapter 11 (Overview of Procedure
and General Procedural Provisions) paragraphs 11-89 to 11-101 for service of the SoC and paragraphs 11-141 to 11-143 for
calculation of time periods.
rr.62(3) and 305 RoP. See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-60 to 11-62
for a description of the procedure for changing a party.
r.66 RoP. See paragraphs 12-04 to 12-28 in relation to the procedure for a preliminary objection.
r.67 RoP. See figure 12-4.
r.68 RoP referring to rr.24(a) to (j) RoP. See paragraph 12-59 which lists the requirements.
r.71 RoP referring to r.27 RoP. See also paragraphs 12-50 to 12-54 in relation to examining the requirements of the SoC and
the consequences if the requirements are not met.
r.69(1) RoP.
r.69(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 228
