A guide to the UPC and the UP - Flipbook - Page 242
– Where the parties have agreed that the action shall be heard by single judge, an indication of
the fact together with evidence of the defendant’s agreement; 255
– An indication of the extent to which revocation of the patent is requested; 256
– One or more grounds of revocation, supported by arguments of law and, where appropriate,
the claimant’s claim construction; 257
– An indication of the facts relied on; 258
– An indication of the evidence relied on, where available. It is also possible to indicate further
evidence which will be offered in support; 259
– An indication of any order the claimant will seek during the interim procedure; 260 and
– A list of the relevant documents, including witness statements, referred to in the statement
for revocation, together with a copy of each of these documents, 261 and any request that all
or part of any such document need not be translated or that they should be kept
confidential pursuant to rr.262(1) and/or 262A RoP. 262
12-115 The requirement that the statement for revocation indicates the extent to which revocation of
the patent is requested implies that the Court’s examination is limited to the extent to which
the patent is challenged. For example, a claimant might request partial revocation of the patent
instead of applying to revoke the patent in full where not all the claims pose a potential
problem in relation to infringement. This might result in less costly Court fees as the value
of dispute should be lower.
12-116 If the claimant only challenges one of several independent claims of a patent, the question
arises as to whether claims which depend on any such independent claim can nonetheless also
be examined for patentability, even if the statement for revocation is expressly directed only
against the subject-matter of an independent claim. The case law of the Board of Appeal of
the EPO answers this question affirmatively: the dependent claim is invalid, provided that
the validity of the independent claim is prima facie put in doubt by the information which
is already available. 263
12-117 It is unclear whether, if partial revocation of the patent is initially sought, this can be extended
to a request for full revocation in the course of the revocation proceedings. In EPO opposition
proceedings, the opponent’s statement under r.76(2)(c) EPC establishes the extent to which the
patent is contested and thus the formal competence of the opposition division or board of
appeal. However, this provision is based on the fact that the opposition can only be filed within
a specific time limit of nine months. In contrast, a revocation action under the UPCA can be filed
at any time, so a further revocation action could theoretically be filed against the parts of the
patent not disputed in a previous revocation action. Accordingly, for the sake of procedural
efficiency, it should be possible for the claimant to extend an initial request for partial
revocation to a request for full revocation in the course of the revocation proceedings.
255
256
257
258
259
260
261
262
263
r.44(e) RoP.
r.44(d) RoP.
r.44(e) RoP.
r.44(f) RoP.
r.44(g) RoP. See paragraphs 12-43 to 12-46 regarding a discussion of what evidence should be included with the SoC.
r.44(h) RoP. In anticipation of the interim procedure, the claimant might, for example, indicate in the statement for revocation
that the Court should appoint an expert.
r.13(2) RoP.
r.44(i) RoP. Rr.13(2) and (3) RoP relating to the SoC apply mutatis mutandis regarding the supply of copies of documents
referred to and decisions of the judge-rapporteur regarding translations and confidentiality. See paragraphs 12-38 to 12-40
and 12-47 to 12-49.
Decision G 9/91 of the Boards of Appeal of the EPO.
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A Guide to the UPC and the UP 232
