A guide to the UPC and the UP - Flipbook - Page 241
proceedings before it, pending the outcome of the EPO opposition, if the EPO’s decision is
expected to be given rapidly. 243
12-112 Further, there is no requirement to file an opposition with the EPO before bringing a revocation
action. 244 Thus, the claimant can file a revocation action directly following the grant of a patent.
Statement for Revocation
Parties
12-113 Any natural or legal person, or any body entitled to bring actions in accordance with its national
law may bring a revocation action provided such person “is concerned by [the] patent”. 245
Contents of Statement for Revocation
12-114 The statement for revocation must contain the information set out in r.44 RoP. The first six
requirements in r.44(a) RoP are incorporated by cross-reference to the list of contents of the
SoC. 246 The statement for revocation must contain:
– The name of the claimant, and, where the claimant is a corporate entity, the location of its
registered office, and of the claimant’s representative; 247
– The name of the defendant, and, where the defendant is a corporate entity, the location of
its registered office; 248
– Post and electronic addresses for service on the claimant and the names of the persons
authorised to accept service; 249
– Post and, where available, electronic addresses for services on the defendant and the names
of the persons authorised to accept service, if known; 250
– Details of the patent concerned, including the number; 251
– Where applicable, information about any prior or pending proceedings relating to the patent
concerned before the Court including any action for revocation or a declaration of noninfringement pending before the central division and the date of any such action, the EPO
or any other court or authority; 252
– Where the parties have agreed to bring the action before a local or regional division, 253
an indication of the division which shall hear the action and evidence of the
defendant’s agreement; 254
243
244
245
246
247
248
249
250
251
252
253
254
art.295(a) RoP. See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-166 to 11-168 on
stays pending EPO oppositions.
art.33(8) UPCA.
art.47(6) UPCA. See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraph 11-50 for a discussion
of the relevant issues.
r.13(1)(a) to (d), (g) and (h) RoP. See paragraph 12-34.
r.44(a) RoP referring to r.13(1)(a) RoP.
r.44(a) RoP referring to r.13(1)(b) RoP.
r.44(a) RoP referring to r.13(1)(c) RoP.
r.44(a) RoP referring to r.13(1)(d) RoP.
r.44(a) RoP referring to r.13(1)(g) RoP. Since a revocation action can also be brought against SPCs, if appropriate, the relevant
SPC order should also be expressly stated.
r.44(a) RoP referring to r.13(1)(h) RoP.
In accordance with art.33(7) UPCA.
r.44(b) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 231
