- in European Union
- in European Union
A recent order by the Central Section of the Unified Patent Court (UPC) in Munich reinforces that any late request for written exchanges in a revocation action is only valid if it is justified by new evidence or procedural defects, as Stéphane Masi explains.
On 4 August 2025, the Central Section of the Unified Patent Court (UPC) in Munich rejected a request to extend the written phase of a revocation action against European patent, EP 2 611 800. The order, based on the strict application of Rule 36 of the UPC Rules of Procedure, confirms that any late request for written exchanges is only valid if it is justified by new evidence or procedural defects, conditions that the applicant has not been able to demonstrate.
Background to the case
The patent in question (EP 2 611 800) was issued on 16 June 2019. This latest UPC ruling relates to a revocation action filed against this patent on 20 December 2024.
Key facts:
- Rejection of all requests and/or applications made by the parties.
- The decision on the admissibility of an attack on novelty made by the applicant for the action for revocation is referred to the intermediate or oral procedure.
Reminder: UPC revocation actions
Unless the patent holder has requested to derogate from the jurisdiction of the Unified Patent Court (which is currently still possible during the current transitional period of seven years by filing an 'opt-out'), third parties have the possibility of centrally requesting the revocation of a granted European patent before the UPC.
This revocation action must be brought in compliance with the legal bases which govern it; in particular, in compliance with the terms of the Unified Patent Court Agreement (UPCA) and its Rules of Procedure (UPC Rules of Procedure).
Rather than having to bring cancellation actions before the courts of all the states for which the European patent has been validated, third parties can now bring a centralised action to obtain a single decision which will take effect – at a minimum – in all the territories of the unitary patent (on its date of grant), i.e. currently 18 EU member states.
To protect themselves from such centralised actions, some European patent holders opted to derogate from the jurisdiction of the UPC (including for older patents before the entry into force of the UPC). However, they must lift this derogation to introduce an action for infringement to their advantage before the UPC.
Conversely, some European patent holders chose not to opt-out to benefit from the centralised approach to infringement and/or the associated advantages; in particular, the ability offered by the unitary patent to control the costs of maintaining patents in force.
The patent in question here is a European patent which falls into this second category and has been the subject of a revocation action by a third party before the UPC.
In the context of such an action, and when it is deemed admissible in its forms, the parties have the opportunity during the time limits of the written procedure phase to exchange arguments, with supporting evidence where appropriate. More specifically, and as recalled in this decision, Rule 43 of the UPC Rules of Procedure provides for a written procedure which consists of:
- the filing of a request for revocation;
- a statement of defence; and,
- optionally, a reply to the statement of defence; and
- a rejoinder to the reply.
In the present case, the applicant in the UPC revocation action requested an extension of the written procedure.
The Court order
Notably, the order of the UPC issued on 4 August 2025, relating to the revocation action brought by a Finnish company against the patent (EP 2 611 800) owned by a Danish company, includes a rejection of the request for extension of the written procedure filed by the Finnish company.
The Finnish applicant in the revocation action filed a request to extend the written proceedings, which must be done before the closing of the written decision governed by Rule 35 of the UPC Rules of Procedure. The applicant wished to challenge the latest arguments put forward by the defendant (here the patent owner) on the patentability of its invention, and more particularly concerning the criterion of novelty. As things stand, the applicant considered it necessary to challenge these latest arguments of the patentee, which it claimed are erroneous and merit a written counterattack.
More specifically, the applicant based its request for an extension of the written procedure on the regulatory provisions of UPC Rule 36 and, in particular, its passage worded as follows: "[...] before the date on which the reporting judge intends to close the written procedure [Rule 35, point (a), UPC Rules], the reporting judge may authorise the exchange of new pleadings within a period to be specified [...] "
Considering that:
- the parties have had sufficient opportunity to express themselves in writing and the applicant does not refer to any new facts or elements;
- the debates must end with the last response produced by the defendant (the defendant has the last word in the rejoinder: cf. UPC Rule 43); and
- the grounds raised by the applicant are not valid because they do not constitute a procedural defect affecting the principles of fairness, the right to be heard, etc.;
the Court decided by not to extend the written procedure, concluding in its decision that Rule 36 of the UPC Rules of Procedure is not intended to apply here.
Comments and conclusions
This decision underlines the importance of producing valid explanations consistent with what is required by legal and regulatory texts.
It was necessary here to demonstrate which procedural principle
had not been respected; and contesting the arguments on the merits
of the holder's written submissions, as the applicant did,
could not constitute an admissible ground within the framework of
the rule which it invoked to justify the extension of the written
procedure
(Rule 36, UPC Rules of Procedure).
Finally, in its decision, the Munich Central Division recalled that it is useless, even counterproductive, to produce additional arguments beyond the number of exchanges authorised (cf. Rule 43, UPC Rules of Procedure) and in defiance of the prohibition already formulated in this regard by the Court: additional arguments submitted out of time will not be taken into account by the Court (note: in support of Rule 9.2, UPC Rules of Procedure).
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