In an order dated 28 February 2025, the Unified Patent Court (UPC) rejected Esko-Graphics' request for leave to amend its infringement claim to include the Netherlands. The request followed the successful restoration of the Netherlands part of the European patent in suit, which had lapsed at the time the original action was filed. Whilst the Munich Local Division of the UPC found that the claimant had unduly delayed its request to amendment their pleadings, the decision raises broader questions regarding procedural efficiency.
When the infringement action was served on 27 August 2024, the Netherlands part of the patent had lapsed due to non-payment of a renewal fee. The claimant's request for restoration in the Netherlands was granted on 18 October 2024; three months later, on 17 January 2025, Esko-Graphics submitted pleadings for leave to amend its claim, seeking a declaration of infringement and an injunction in the Netherlands in addition to the original UPC member states in which the patent was in force.
In justifying the timing of its request, the claimant explained that whilst it was notified of the restoration decision in early November, it only became aware of the broader implications for the ongoing UPC proceedings in mid-January. However, under Rule 263.2 RoP, leave to amend is denied if the applicant fails to demonstrate that the amendment could not have been made with reasonable diligence at an earlier stage. The Court found that Esko-Graphics had not exercised such diligence and failed to provide a convincing justification for the delay.
Whilst the Munich Local Division's interpretation of the Rules is notionally sound, the ruling leaves the claimant in an awkward position: must Esko-Graphics now initiate parallel proceedings in the Netherlands despite the UPC having competence for the whole case? This Order suggests that whilst the UPC's principle of procedural efficiency may apply strictly within its own framework, its approach may not always accommodate the wider complexities that arise.
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