The proceedings before the UPC in the first instance should normally have taken place within one year.[1] For this reason, a strict time limit regime applies to its expiry (Rule 9 (2) UPC Rules of Procedure). In most cases, failure to comply with set time limits leads to the preclusion of the associated application. An extension of the time limit may be possible, but is the exception rather than the rule. It is therefore of great importance, especially for the defendant, to develop an effective defense strategy without delay and, if necessary, to carry out preparatory work, such as a prior art search, as soon as an infringement action is likely to be filed. The following article describes the time-dependent course of infringement proceedings in the first instance with the respective steps for the claimant and the defendant.
The proceedings before the Court consist of a written, an interim and an oral procedure (Art. 52 UPCA).
Written procedure
– Lodging of a Statement of claim (Rule 13 UPC RoP) and payment of the fee for the infringement action (Rule 15 UPC RoP) – claimant
– within 1 month of service of the Statement of claim: lodging of a Preliminary objection which may concern: i) the jurisdiction and competence of the Court, ii) the competence of the division indicated by the claimant or iii) the language of the proceedings (Rule 19 UPC RoP) – defendant
– within 3 months of service of the Statement of claim: lodging of a Statement of defense (Rule 23 UPC RoP) and, where appropriate, a Counterclaim for revocation, if the validity of the patent is claimed (Rule 25 UPC RoP). A fee must be paid for the Counterclaim for revocation (Rule 26 UPC RoP) – defendant
→ If no Counterclaim for revocation is included in the Statement of defence:
– within 2 months of service of the Statement of defense: lodging of a Reply to the Statement of defense (Rule 29 b UPC RoP) – claimant
– within 1 month of service of the Reply to the Statement of defense: lodging of a Rejoinder to the Reply to the Statement of defence (Rule 29 c UPC RoP) – defendant
→ If a Counterclaim for revocation is included in the Statement of defence:
– within 2 months of service of the Statement of defense: Lodging of a Defence to the Counterclaim for revocation together with any Reply to the Statement of defence and any Application to amend the patent (Rule 29 a, Rule 30 UPC RoP) – claimant
– within 2 months of service of the Defence to the counterclaim: Lodging of a Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence and any Defence to an Application to amend the patent (Rule 29 d, Rule 32 (1) UPC RoP) – defendant
– within 1 month of the service of the Reply to the Defence to the Counterclaim: lodging of a Rejoinder to the Reply together with any Reply to the Defence to an Application to amend the patent (Rule 29 e, Rule 32 (3) UPC RoP) – claimant
– within 1 month of service of the Reply to the Defence to an Application to amend the patent: lodging of a Rejoinder to the Reply (Rule 32 (3) UPC RoP) – defendant
In addition, the judge-rapporteur may, on a reasoned request by a party lodged before the date on which he intends to close the written procedure, allow the exchange of further written pleadings, within a period to be specified (Rule 12 (5), Rule 35 – 36 UPC RoP). The written procedure shall be deemed closed upon expiry of the specified period.
Interim procedure
During the interim proceedings, the judge-rapporteur takes charge of the proceedings and makes all necessary preparations for the oral hearing. In particular, he may, if appropriate, hold an interim conference with the parties (Art. 52 para. 2 UPCA, Rule 101 (1), Rule 103 – 106 UPC RoP). In addition, the judge-rapporteur shall explore with the parties the possibility for a settlement, including mediation and/or arbitration, by using the facilities of the patent mediation and arbitration centre (Art. 35, 52 UPCA). Within three months of the closure of the written procedure the judge-rapporteur shall complete the interim procedure (Rule 101 (3) UPC RoP).
Oral procedure
The oral procedure starts immediately after the interim procedure is closed (Rule 110 UPC RoP). From this point on, the presiding judge takes over the management of the oral procedure (Rule 110 (3), Rule 112 (1) RoP). The presiding judge shall endeavour to complete the oral hearing within one day. Therefore he may set time limits for parties’ oral submissions (Rule 113 (1) UPC RoP). The Court shall give the decision on the merits as soon as possible after the closure of the oral hearing. The Court may give its decision immediately after the closure of the oral hearing and provide its reasons on a subsequent date. In any case the Court shall endeavour to issue the decision on the merits in writing within six weeks of the oral hearing (Rule 118 RoP).
Author: Dr. Olga Michala
E-mail: michala@paustian.de
[1] See the Preamble to the UPC Rules of Procedure (UPC RoP)