A guide to the UPC and the UP - Flipbook - Page 240
Figure 12-5: Procedure and Timeline of Written Stage of a Revocation Action
Month
0
Clmt: statement of claim (rr.13, 44)
Def: preliminary objection
(rr.19, 48)
1
Def: defence to
revocation (rr.49(1), 50)
+/-
Def: counterclaim
for infringement
(rr.49(2)(b), 50(3))
+/-
Def: application to amend
patent (rr.49(2)(a), 50(2))
4
Clmt: reply to
defence (r.51)
+/-
Clmt: defence to
counterclaim for
infringement (rr.51, 56(1))
+/-
Chnt: defence to
application to amend
patent (rr.32(1), 51, 55)
5
Def: rejoinder to reply
to defence (r.52)
+/-
Def: reply to defence to
counterclaim (rr.52, 56(3))
+/-
Def: reply to defence
(rr.32(3), 52, SS)
Clmt: rejoinder to reply to
defence to counterclaim
(rr.43(3), 55, 56(4))
+/-
Clmt: rejoinder to reply
(rr.32(3), 55)
2
3
6
Competent Division
12-110 Unless the parties agree otherwise, a revocation action must be brought before the central
division. 239 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, the revocation action may only be
brought before that same local or regional division and that division then has to decide what to
do with the action. As explained in paragraphs 12-69 and 12-72 above, 240 the local or regional
division may then (1) keep both aspects of the case and request a technical judge to be
allocated to the panel; (2) bifurcate the action referring the counterclaim to the central division
whilst (a) proceeding with or (b) suspending the infringement claim; or (3) if the parties agree,
refer the entire case to the central division. 241
12-111 Pending opposition proceedings before the EPO will not preclude the filing of a revocation
action. In fact, both proceedings could be examined in parallel. However, the claimant is
required to inform the Court of any such pending proceedings. 242 The Court may stay the
239
240
241
242
arts 33(4) and (7) UPCA.
See also chapter 6 (Jurisdiction Competence and Forum Shopping) paragraphs 6-85 to 6-90.
arts 33(3) and 33(7) UPCA.
art.33(10) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 230
