1. Key takeaways
Patent owners are not restricted in amending patents to counterclaims for revocation
The patentee may also request amendments to the patent that are not directly related to the grounds for invalidity arising from the counterclaim. The purpose of Rule 30 RoP is to give the patentee the opportunity to 'save' its patent in an amended form in the event of a successful invalidity challenge – irrespective of the grounds that have been asserted in the counterclaim for revocation.
Claim adjustments in infringement actions are crucial when amending dependent claims under Rule 30 RoP
According to Rule 30 RoP, an application to amend the patent can only be submitted in response to a counterclaim for revocation. If dependent patent claims are made the subject of auxiliary requests within an application according to Rule 30 RoP, it must also be possible for the patentee to make corresponding amendments with regard to the infringement action. This ensures the infringement action reflects the amended patent and avoids situations where infringement of the amended patent cannot be pursued.
UPC proceedings should be synchronized with EPO proceedings, especially regarding amendments
Rule 295(a) RoP emphasizes harmonizing these proceedings. This applies in general and in particular with regard to Rule 30 RoP. However, such synchronisation can only work if it is possible to introduce claim versions amended by the EPO into (infringement) proceedings before the UPC. If such amendments are possible under Rule 30, it must also be possible to amend the claims of the infringement action accordingly.
New infringing embodiments can be introduced during proceedings if discovered after filing
The Court allows flexibility for patentees to address newly discovered infringing activities, ensuring infringement claims accurately reflect the alleged infringement. The patentee (i.e. the applicant) is to be allowed a reasonable period to examine the infringement with legal representatives before asserting it in the proceedings.
2. Division
Local Division Munich
3. UPC number
UPC_CFI_425/2024
4. Type of proceedings
Infringement proceedings / Application for leave to change claim
5. Parties
Applicant (Claimant in the main
proceedings): JingAo Solar Co., Ltd.
Respondents (Defendants in the infringement
proceedings): Chint New Energy Technology Co., Ltd.,
Astronergy Europe GmbH, Astronergy GmbH, Astronergy Solarmodule
GmbH, Astronergy Solar Netherlands B.V., Chint Solar Netherlands
B.V.
6. Patent(s)
EP 2 787 541
7. Jurisdictions
UPC / Germany, France, Italy, Netherlands
8. Body of legislation / Rules
Rule 30 RoP, Rule 295(a) RoP, Rule 30.1(b) RoP, Rule 263 RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
