The Hamburg Local Division clarified that the counterclaim for revocation may attack the validity of claims not asserted against the defendant, in a decision on the merits issued on Agfa NV v Gucci (UPC_CFI_287/2023).
AGFA asserted only two of three independent claims against the Gucci entities in their infringement action. Gucci filed a counterclaim for revocation in which the validity of all of the claims was attached. The Court allowed the invalidity attack against claims not relied on by AGFA, reasoning that Art. 32(1)(e) and 65(1) UPCA do not distinguish between asserted and unasserted patent claims. In these articles reference is made to the patent in its entirety, suggesting that defendants can attack any claim in the counterclaim for revocation.
Additionally, as according to Art. 33(4) UPCA, a defendant is unable to bring a standalone revocation action against the patent at issue once an infringement action has been filed against them, the defendant must use the counterclaim for invalidity to launch an attack on the asserted patent. Consequently, the defendant should be able to attack the patent in its entirety in the counterclaim, otherwise the unasserted claims are immune to the validity challenge.
These comments are a welcome clarification for defendants planning their counterclaim strategy, and for claimants wishing to understand which claims they may have to defend. We now await a relevant reference to the Court of Appeal who can make this precedent binding.
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