Action for nullity

Synthetic vision

Here are the main phases of a written procedure at first instance for a nullity action:

This procedure is quite time-constrained: in just 6 months, the written procedure must be completed.

Applicant's statement

Declaration

The claimant's statement describes the claims or demands of the attacking party.

This declaration is framed by rule 44 of the rules of procedure.

In essence, this declaration must be lodged with the division which the applicant chooses (of course, if it is competent) and must include (rule 44 of rules of procedure) :

  1. concerning the applicant:
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail;
    • the name of the representative;
  2. concerning the defendant:
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail (if this information is known);
  3. concerning the patent:
    • patent information (including its number);
  4. concerning the procedure:
    • an indication of any procedure, past or pending, before any authority (including EPO or national) relating to the patent;
    • an indication of the division chosen by all the parties (in the case of a local or regional division) (proof of this agreement is necessary);
    • an indication whether the parties agree that the panel should be for a single judge (proof of this agreement is necessary);
  5. concerning the dispute:
    • the extent of the nullity sought;
    • the grounds for revocation, the facts and the evidence on which this claim is based;
    • an indication of the damages if they exceed a fixed threshold;
    • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if applicable).

Interest in taking action

It is important to note that we have no obligation here to demonstrate an interest in taking action.

Therefore, it is entirely possible to have a front man attacker.

Payment of procedural fees

In order for the declaration to be valid, the applicant must pay a procedural fee (Rule 46 and 59 of the rules of procedure) of 20,000 €.

This fee is payable only once per instance, regardless of the number of patents or parts (rule 370.7 of the rules of procedure set from the consultation concerning the rules concerning procedural fees).

However, it would seem that the reporting judge fixes the amount of damages at stake by a preliminary decision during the interim proceedings (Rule 59.1 of the rules of procedure): the amount of tax due can thus be reassessed (?).

Respondent's information

It should be noted that the defendant is informed of the action directly by the division (rule 270 of the rules of procedure) is :

Examination of formal admissibility

As soon as possible, the division will verify that:

  • the patent in question is indeed a patent which has not been the subject of an opt-out (rule 46 together rule 16.1 of rules of procedure).
  • the formal conditions indicated above are well respected (rule 46 together rule 16.2 of rules of procedure).

If a formal condition mentioned just before has not been met, the division invites the claimant to correct his declaration within 14 days from the notification of the irregularity (rule 46 together rule 16.3 of rules of procedure).

Otherwise, the action may be declared inadmissible (rule 46 together rule 16.4 of the rules of procedure).

Appointment of a reporting judge

The judge presides over the formation (which has just been formed for this action, according to rule 46 together rule 17 of rules of procedure) then appoints a reporting judge.

This judge rapporteur may well be the president.

The judge rapporteur, upon appointment, rules on the request for exemption from translation of the documents supplied - see above (rule 44 together rule 13.2 of the rules of procedure).

Defense of the defender

Preliminary objections

Preliminary objections are framed by rule 48 of the rules of procedure.

Indeed, it is entirely possible for the defendant to raise preliminary objections: the time limit for doing so is 1 month from the notification of the action (rule 48 together rule 19.1 of rules of procedure).

These objections may have as their object:

  • the jurisdiction of the court (including an opt-out);
  • the competence of the division indicated by the applicant;
  • the language of the proceedings.

The defendant is invited as soon as possible to respond to these objections within 14 days of notification. In the event of correction of the declaration of the applicant by modifying the competent division, the reporting judge returns the case to this division (rule 48 together rule 19.5 of rules of procedure).

If no preliminary objection is made, this constitutes recognition of the jurisdiction of the court and of the division chosen by the claimant (rule 48 together rule 19.7 of the rules of procedure).

The decision concerning the possible preliminary objections of the defendant is rendered as quickly as possible after the opportunity of response from the plaintiff (rule 48 together rule 20.1 of rules of procedure).

Preliminary objections can be joined to the main proceedings (rule 48 together rule 20.1 of the rules of procedure).

An appeal against the decision can be made. A stay of proceedings in the main proceeding can be ordered (rule 48 together rule 20.2 of the rules of procedure).

Defense in itself

This defense is governed by rules 49 and 50.1 of the rules of procedure.

The defendant must file his defense (i.e. defense) within 2 months from the service of the declaration of the plaintiff (rule 49 of the rules of procedure).

The defense must contain:

  1. concerning the defendant (ie rule 50.1 together rule 24 of the rules of procedure) :
    • his name and the place of his establishment (if applicable);
    • the postal and electronic address and the names of the persons authorized to receive the mail;
    • the file reference;
  2. concerning the dispute (ie rule 50.1 together rule 29A of rules of procedure) :
    • an indication concerning the facts supporting this defense and the questioning of the facts of the defendant;
    • evidence or an indication of the evidence that could be adduced;
    • the arguments supporting the fact that the counterclaim must be dismissed and an indication concerning each dependent claim individually justifying their validity;
    • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
    • a reply to the defendant's statement as to the amount of the dispute;
    • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if this is relevant).

Examination of formal admissibility

The division checks (rule 54 together rule 27.1 of rules of procedure) that points 1 and 2 (ie information concerning the defendant and concerning a possible counterclaim) are well respected.

If this is not the case, the defendant is notified that he has 14 days to correct his defense (rule 54 together rule 27.2 of rules of procedure).

Otherwise, a default decision may be made (rule 54 together rule 27.3 of the rules of procedure).

Definition of the procedural calendar

Following the respondent's response, the judge-rapporteur, after consulting the parties, sets the timetable for the intermediate proceedings (i.e. start and duration rule 54 together rule 28 of rules of procedure) and sets a date for the oral proceedings (an alternative date may be provided).

Counterfeiting Counterclaim

Counterclaim in itself

Counterfeiting counterclaim is governed by rule 50.3 together rule 13.1 of rules of procedure.

In particular, this counterclaim must contain (rule 50.3 together rule 13.1 of rules of procedure) :

  • the nature of the claim and the measures it seeks to obtain;
  • the facts on which this claim is based (eg, targeted infringement acts and dates, number of counterfeit claims);
  • the evidence or an indication of the evidence that could be adduced;
  • arguments relating to the grounds on which the facts presented should be considered as counterfeits (including the interpretation of the claims);
  • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
  • an indication of the damages if they exceed a fixed threshold;
  • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if applicable).

Of course, concerning this last point, documents and testimonies must be provided at the same time (rule 50.3 together rule 13.2 of rules of procedure).

Payment of a procedural fee

In order for the counterclaim to be valid, the plaintiff must pay a procedural fee (rule 53 together rule 15 and rule 60 of the rules of procedure).

This procedural fee depends on the amount of damages sought (rule 370.2 of the rules of procedure tax table set from the consultation concerning the rules concerning procedural fees):

  • 11.000 €
  • and in addition, a variable amount (ie damages and interest = d & i)
    • +2.500 € if 500.000 € <d & i <= 750.000 €
    • + € 4,000 if € 500,000 <d & i <= € 1,000,000
    • +8,000 € if 500,000 € <d & i <= 1,500,000 €
    • +13,000 € if 500,000 € <d & i <= 2,000,000 €
    • + € 20,000 if € 500,000 <d & i <= € 3,000,000
    • + € 26,000 if € 500,000 <d & i <= € 4,000,000
    • +32,000 € if 500,000 € <d & i <= 5,000,000 €
    • + € 39,000 if € 500,000 <d & i <= € 6,000,000
    • +46,000 € if 500,000 € <d & i <= 7,000,000 €
    • +52,000 € if 500,000 € <d & i <= 8,000,000 €
    • +58,000 € if 500,000 € <d & i <= 9,000,000 €
    • +65,000 € if 500,000 € <d & i <= 10,000,000 €
    • +75,000 € if 500,000 € <d & i <= 15,000,000 €
    • +100,000 € if 500,000 € <d & i <= 20,000,000 €
    • +125,000 € if 500,000 € <d & i <= 25,000,000 €
    • +150,000 € if 500,000 € <d & i <= 30,000,000 €
    • +250,000 € if 500,000 € <d & i <= 50,000,000 €
    • + € 325,000 if x> € 50,000,000

Which basically gives:

This fee is payable only once per instance, regardless of the number of patents or parts (rule 370.7 of the rules of procedure set from the consultation concerning the rules concerning procedural fees).

Nevertheless, it would seem that the reporting judge fixes the amount of damages at stake by a preliminary decision during the interim proceedings (Rule 60 of the rules of procedure): the amount of tax due can thus be reassessed (?).

Patent modification

Any request for modification of the claims must be accompanied by an argument concerning an explanation concerning the articles. A84 CBE, A123 (2) EPC and A123 (3) EPC, concerning the validity of claims (Rule 50.2 of the rules of procedure).

Any proposed changes that arise later must be authorized by the court (rules 50.2 together 30.2 of the rules of procedure).

Applicant response

Applicant's reply

Within 2 months after the defendant's defense to the nullity action, the plaintiff can reply (rule 51 of the rules of procedure).

This reply may include at the same time a defense to the counterclaim and a possible defense to the modification requested by the defendant (Rule 51 of the rules of procedure).

There is no particular form for this replica.

Defense to counterclaim

Within 2 months of notification of the counterclaim, the plaintiff must file a defense to that action (Rule 56.1 of rules of procedure).

This defense must contain (rule 56.2 together rule 24.1 of rules of procedure) :

  • the facts on which the defense is based;
  • possible questioning of the defendant's facts;
  • evidence or an indication of the evidence that could be adduced;
  • arguments concerning the grounds on which the facts presented should not be considered as counterfeiting (including the possible misinterpretation of the claims by the defendant);
  • an indication of the interim injunctions which the court should pronounce during the interim proceedings;
  • a statement as to why the claims for damages sought by the defendant are unfounded;
  • a list of documents and testimonies (indicating a request for exemption from translation, in whole or in part, if applicable).

Defense on request for modification

Defense in the modification of claims (rule 55 together rules 32.1 and 32.2 of the rules of procedure) must contain the reasons why:

  • changes are not acceptable;
  • the patent cannot be maintained with these modifications;
  • counterfeiting is no longer relevant.

Defender's reaction

Duplicate

Within 1 month after the reply, the defendant may submit a rejoinder (Rule 52 of the rules of procedure).

Its content must be limited to the subjects dealt with in the applicant's reply (Rule 52 of the rules of procedure).

Reply to defense to counterclaim

The defendant can present a reply within 1 month from the notification of the defense to the counterclaim (Rule 56.3 of the rules of procedure).

Response to Defense on Change

The plaintiff may file a reply within 1 month of notification of the reply to the defense to the counterclaim (rule 55 together rule 32.3 of the rules of procedure).

Applicant's reply

Duplicate regarding counterclaim

The plaintiff may submit a first rejoinder within 1 month of notification of the reply to the defense to the counterclaim (rule 55 together rule 32.3 of rules of procedure)

Its content must be limited to the subjects dealt with in the defendant's reply (rule 55 together rule 32.3 of the rules of procedure).

Reply to the defendant's modifications

The plaintiff may file a second rejoinder within 1 month of notification of the reply to the defense to the counterclaim (Rule 56.4 of the rules of procedure), together with the rejoinder to the defense of the modification.

Its content must be limited to the subjects dealt with in the defendant's reply (Rule 56.4 of the rules of procedure).

Closure of the written procedure

The written procedure is closed (rule 58 together rule 35a of rules of procedure) at the end of the exchanges described above, by the judge rapporteur, after informing the parties.

The reporting judge recalls the dates fixed for the interim procedure (if applicable) or recalls the fact that no interim procedure will take place (rule 58 together rule 35b of rules of procedure).

It is possible, exceptionally, for the judge rapporteur to authorize additional exchanges, and within limited time frames (rule 58 together rule 36 of the rules of procedure).

Assignment of a technical judge

In certain specific cases (in particular if the parties have agreed on the competence of a local / regional division, see the jurisdiction of the JUB), it may happen that the central division is not competent.

Under this hypothesis, a party or the reporting judge may request the assignment of a technical judge (rule 57 together rule 33 and 34 of the rules of procedure).

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