Recent decisions from various UPC divisions provide
valuable guidance for parties seeking to amend their cases or
patents. The decisions emphasize that it is crucial for parties to
know how to distinguish between the rules for amending patents and
patent actions, as each has its own requirements and scope. This
will enable them to file proper applications and to make strategic
decisions to defend their patent rights as effectively as
possible.
Legal framework
Amendments to the case: Under R. 263.1 of the Rules of Procedure
(RoP), a party may, at any point during the proceedings, request
the Court's permission to alter its claim or amend its case,
which may include the addition of a counterclaim. The rule is
primarily concerned with ensuring that late or unclear amendments
to a case do not unduly hinder the other party in its defense.
Patent amendments: Under R. 30.1 RoP, the patent proprietor may
defend their patent in an amended version against a counterclaim
for revocation. In addition to Art. 76 UPCA, R. 30 RoP specifies
what requirements a patent holder needs to meet in order to file a
clear and comprehensive application to amend the patent.
Recent amendment cases
In JingAo/Astroenergy (March 31,2025, UPC_CFI_425/2024), the Munich Local Division,
in accordance with R. 30 RoP and R. 263 RoP, granted all of the
claimants' requested changes, including patent amendments in
light of an EPO opposition decision, and the addition of new
versions of allegedly infringing products discovered after the
initial filing.
In Supponor/AIM Sport (April 11, 2025, UPC_CoA_169/2025), the Court of Appeal (CoA)
allowed the addition of a new defendant, territorial extension, and
amendments to the infringement action on the basis of R. 263
RoP.
In Fujifilm/Kodak (April 2, 2025, UPC_CFI_359/2023 and UPC_CFI_365/2023), the Mannheim Local
Division, taking into account both provisions, permitted clarifying
amendments to the claims but refused implicit patent amendments,
emphasizing the need for a proper, formal application.
Practical guidelines from these cases
Based on these decisions, the practical guidelines can be
summarized as follows.
| Details |
Claim amendments (R. 263 RoP) |
Claim amendments (R. 263 RoP) |
What is covered?
|
- "Any change to the subject-matter of the
claims" → changes in the wording of a claim, relying
on a combination of claims as new independent claim, etc.
- No need for changes to be limited to addressing directly the
grounds for invalidity asserted in the counterclaim.
- Introduction of claim versions amended by the EPO to help
synchronize its proceedings with those before the UPC.
|
- Amendments of the case due to lack of specificity and changes
to the content of the claim → when the nature or scope of the
dispute changes (eg extended territorial scope and introduction of
counterclaim).
- When dependent patent claims are included in auxiliary requests
under Rule 30 RoP, the patentee must also be able to amend the
infringement action accordingly in order to improve synchronization
of proceedings before both the UPC and EPO.
- Amendments to the infringement action, respectively the patent,
requested in relation to the statement of defense and the
counterclaim for revocation should be regarded, at least in case of
doubt, as an implied request pursuant to Rule 263 RoP and should be
allowed accordingly.
- Amendments in response to concerns raised by the Court, if the
lack of specificity and the amendment responding to it would
concern the substance of the request, would have to be admissible
on a regular basis if it does not unduly hinder the defense of the
defendant.
|
What isn't covered?
|
- Informal or implied amendments, such as mere elaboration on the
patentability of subclaims.
|
- Amendments refining the wording or procedural clarifications
without altering the substantive scope.
- The addition of infringement by equivalence, because claims are
still based on the same acts and the same patent.
- Unconditional amendments to a patent's claim do not require
a separate application or leave to amend under R. 263 RoP.
|
Formalities
|
- Clear and comprehensive (detailed) application, reasonable
number of proposed amendments.
- Where appropriate, submit alternative sets of claims in the
language in which the patent was granted (with translation, if
necessary).
- Specify the order of priority / ranking when submitting
alternative / conditional amendment proposals.
- Explain how the amendments comply with the requirements of
Articles 84 and 123(2) and (3) EPC and why the amended claims are
valid and considered to be infringed.
|
- Explain why the change was not included in the original
pleading.
- Convince the Court that the change could not have been made any
earlier in the proceedings and will not reasonably hinder the other
party.
- The details can be provided in an appendix.
- The frontloaded nature of UPC proceedings must be
protected.
|
Key takeaways
- Applying the correct rule is essential for the admissibility
and effectiveness of any amendment in UPC patent litigation.
Therefore, it is important to know the differences between R. 30
and R. 263 RoP.
- 263 RoP covers the lack of specificity and the amendment
responding to it concerning the substance of the request, not the
wording.
- When it comes to amending the patent itself, R. 30 is lex
specialis to R. 263 RoP.
- Patent amendments need not be linked to the invalidity grounds
in the counterclaim for revocation.
- It is possible to introduce an amendment based on a decision of
the EPO division, since the RoP aim to synchronize UPC proceedings
with EPO proceedings.
The authors thank Laura Schnackerz for her help in drafting this
article.
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.
