As we reach the first round of oral hearings for revocation actions filed at the UPC, many users of the court may have questions regarding the submission of auxiliary requests during these proceedings. In the order dated 31 January 2024 issued by the Munich Central Division in the revocation case brought by NanoString Technologies Europe Limited against the President and Fellows of Harvard College (UPC_CFI_252/2023) regarding EP 2,794,928, the judge rapporteur allowed re-ordering of auxiliary requests and the submission of new amendments to the patent/auxiliary requests after the interim hearing held on 25 January, stating that “the Court sees no legal basis for pre-emptively and categorically ruling out the submission of any further auxiliary requests”. The judge rapporteur set a date of 15 March as the deadline for filing changes to the auxiliary requests which will be “duly considered”, ahead of the oral hearing scheduled for 17 April 2024. Later in the order, however, the judge rapporteur emphasises that proceedings in front of the UPC, including those relating to auxiliary requests have a “front loaded character” and that “Last-minute requests and submissions are not what is intended in UPC proceedings.” This should inform UPC users that auxiliary requests should be filed as early as possible as part of the patentee's defence to any revocation proceedings brought against it, but nevertheless, there may be some flexibility to file these requests later, at the discretion of the judge rapporteur.
Moreover, the order comments that the Court does not see “any legal basis to order the Defendant to make the auxiliary requests more convergent.” In the absence of access to the requests on file, it is not possible to judge the level of convergence they already have. Nevertheless, at the EPO, it is common practice during opposition and appeals to apply a relatively strict convergence requirement to successive requests. This comment made by a judge in the UPC may consequently herald a difference in the permitted practices in countering an invalidity attack at the UPC and EPO.
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