Accueil Unitary Patents The Unified Patent Court or UPC Procédure écrite Infringement Action

Infringement Action

Overview

Below are the key stages of a first-instance written procedure for an infringement action:

The spirit of this procedure is to limit exchanges and thus the time required to « prepare the case for trial » (see point 7 of the preamble to the Rules of Procedure).

Plaintiff’s Statement

Statement

The plaintiff’s statement sets out the claims or assertions of the party initiating the action.

This statement is governed by Rule 13 of the Rules of Procedure.

In essence, this statement must be filed with the division chosen by the plaintiff (provided it has jurisdiction) and must include (Rule 13.1 of the Rules of Procedure):

  1. Regarding the plaintiff:
    • Their name and place of establishment (where applicable);
    • The postal and email addresses and the names of persons authorized to receive correspondence;
    • The name of the representative;
  2. Regarding the defendant:
    • Their name and place of establishment (where applicable);
    • The postal and email addresses and the names of persons authorized to receive correspondence (if known);
  3. Regarding the patent proprietor(s) (if the plaintiff is not the proprietor or in case of co-ownership):
    • The postal and email addresses and the names of persons authorized to receive correspondence;
    • Evidence that the plaintiff is authorized to file a statement;
  4. Regarding the patent:
    • Information concerning the patent (including its number);
  5. Regarding the procedure:
    • An indication of any past or pending proceedings before any authority (including EPO or national) related to the patent;
    • An indication of the chosen division and details as to why this division has jurisdiction;
    • An indication if the parties agree that the panel should consist of a single judge (evidence of this agreement is required);
  6. Regarding the dispute:
    • The nature of the plaintiff’s claim and the remedies sought;
    • The facts on which the claim is based (e.g., alleged infringing acts, dates, numbers of infringed claims);
    • The evidence or an indication of the evidence that may be provided;
    • Arguments as to why the presented facts should be considered as infringement (including claim interpretation);
    • An indication of the provisional injunctions that the court should order during the interim procedure;
    • An indication of damages if these exceed a set threshold;
    • A list of documents and witness statements (including a request for exemption from translation, in whole or in part, if relevant).

Naturally, regarding the last point, the documents and witness statements must be provided at the same time (Rule 13.2 of the Rules of Procedure).

Payment of a procedural fee

For the statement to be valid, the claimant must pay a procedural fee (Rule 15 of the Rules of Procedure).

This procedural fee depends on the amount of damages sought (Rule 370.2 of the Rules of Procedure together with the fee table from the consultation on the rules concerning court fees):

  • 11,000 €
  • and in addition, a variable amount (i.e. damages = 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 €

This roughly translates as:

This fee is payable only once per instance, regardless of the number of patents or parties (Rule 370.7 of the Rules of Procedure together with the outcome of the consultation on the rules concerning court fees).

However, it appears that the judge-rapporteur sets the amount of damages at stake by way of a preliminary decision during the interim procedure (Rule 22 of the Rules of Procedure): the amount of the payable fee may thus be reassessed (?).

Notification of the defendant

It should be noted that the defendant is notified of the action directly by the division (Rule 270 of the Rules of Procedure) either:

Formal admissibility examination

As soon as possible, the division verifies that:

  • the patent in question is indeed a patent that has not been opted out (Rule 16.1 of the Rules of Procedure).
  • the formal conditions mentioned above (i.e. up to point 6, first item, fees, submission of documents) have been duly complied with (Rule 16.2 of the Rules of Procedure).

If a formal condition mentioned above has not been complied with, the division invites the claimant to rectify the statement within 14 days from the notification of the irregularity (Rule 16.3 of the Rules of Procedure).

Otherwise, the action may be declared inadmissible (Rule 16.4 of the Rules of Procedure).

Appointment of a judge-rapporteur

The presiding judge of the panel (which has just been constituted for this action, in accordance with Rule 17 of the Rules of Procedure) then appoints a judge-rapporteur.

The judge-rapporteur may well be the presiding judge.

Upon appointment, the judge-rapporteur rules on the request for exemption from translation of the documents submitted – see above (Rule 13.2 of the Rules of Procedure).

Defendant’s Defense

Preliminary Objection

Preliminary objections are governed by Rule 19 of the Rules of Procedure.

The defendant may indeed raise preliminary objections: the time limit for doing so is 1 month from the notification of the action (Rule 19.1 of the Rules of Procedure).

Such objections may relate to:

  • the jurisdiction of the court (including in relation to an opt-out);
  • the jurisdiction of the division indicated by the claimant;
  • the language of the proceedings.

The defendant is invited to respond to these objections as soon as possible within 14 days of notification. If the claimant’s statement is corrected by changing the competent division, the judge-rapporteur shall refer the case to that division (Rule 19.5 of the Rules of Procedure).

If no preliminary objection is raised, this constitutes an acknowledgment of the jurisdiction of the court and of the division chosen by the claimant (Rule 19.7 of the Rules of Procedure).

The decision on any preliminary objections raised by the defendant shall be issued as soon as possible after the claimant has had the opportunity to respond (Rule 20.1 of the Rules of Procedure).

Preliminary objections may be joined to the main proceedings (Rule 20.1 of the Rules of Procedure).

An appeal may be lodged against the decision. A stay of proceedings in the main action may be ordered (Rule 20.2 of the Rules of Procedure).

Substantive Defense

The substantive defense is governed by Rules 23, 24, and 25 of the Rules of Procedure.

The defendant must file its defense (i.e., statement of defense) within 3 months from the service of the claimant’s statement (Rule 23 of the Rules of Procedure).

The defense must contain (Rule 24 of the Rules of Procedure):

  1. concerning the defendant:
    • its name and place of establishment (where applicable);
    • the postal and electronic addresses and the names of the persons authorized to receive correspondence;
    • the case reference;
  2. concerning the proceedings:
    • an indication of any preliminary objection filed;
  3. concerning the dispute:
    • the facts on which the defense is based;
    • any challenge to the claimant’s facts;
    • the evidence or an indication of the evidence that may be submitted;
    • arguments as to why the facts presented should not be considered as infringement (including any misinterpretation of the claims by the claimant);
    • an indication of the provisional measures that the court should order during the interim procedure;
    • a statement explaining why the damages claimed by the claimant are not justified;
    • a list of documents and witness statements (including a request for exemption from translation, in whole or in part, if relevant).

Of course, regarding the last point, the documents and witness statements must be provided at the same time (Rule 24 together with Rule 13.2 of the Rules of Procedure).

The judge-rapporteur shall rule as soon as possible on the request for exemption from translation of the documents provided (Rule 24 together with Rule 13.2 of the Rules of Procedure).

Formal Admissibility Examination

The division verifies (Rule 27.1 of the Rules of Procedure) that points 1 and 2 (i.e., information concerning the defendant and concerning a potential counterclaim) are duly complied with.

If this is not the case, the defendant is notified that they have a 14-day period to correct their reply (Rule 27.2 of the Rules of Procedure).

Otherwise, a default decision may be issued (Rule 27.3 of the Rules of Procedure).

Setting the Procedural Calendar

Following the defendant’s response, the judge-rapporteur, after consulting the parties, sets the schedule for the interim procedure (i.e., start and duration under Rule 28 of the Rules of Procedure) and fixes a date for the oral hearing (an alternative date may be provided).

Counterclaim

Counterclaim for Revocation

During the defense, it is possible to file a counterclaim for revocation of the patent (Rule 25.1 of the Rules of Procedure).

This counterclaim must include (Rule 25.1 of the Rules of Procedure):

  • The extent of the revocation sought;
  • The grounds for revocation, supported by arguments;
  • An indication of the facts supporting the arguments;
  • The evidence or an indication of the evidence that could be provided;
  • An indication of the provisional measures that the court should order during the interim procedure;
  • An indication of the damages sought in the counterclaim, if these exceed a set threshold;
  • An indication regarding the jurisdiction of the division due to this counterclaim or the assignment of a technical judge;
  • A list of documents and witness statements (including a request for exemption from translation, in whole or in part, if relevant).

Naturally, regarding the last point, the documents and witness statements must be submitted simultaneously (Rule 25.1 in conjunction with Rule 13.2 of the Rules of Procedure).

The judge-rapporteur rules as soon as possible on the request for exemption from translation of the submitted documents (Rule 25.1 in conjunction with Rule 13.2 of the Rules of Procedure).

If the patent proprietor is not the claimant, the following must also be provided:

  • Their name and place of establishment (where applicable);
  • The postal and email addresses and the names of the persons authorized to receive correspondence (if such information is known).

If the claimant was not the sole proprietor of the patent or was not the proprietor at all, the division sends a copy of the counterclaim to the proprietor(s) (Rule 25.2 in conjunction with Rule 13.2 of the Rules of Procedure), and they become parties to the proceedings with respect to the counterclaim.

Payment of a Counterclaim Fee

For the counterclaim to be valid, the defendant must pay a counterclaim fee (Rule 26 of the Rules of Procedure).

This counterclaim fee is equal to the procedural fee paid by the claimant (Rule 370.4 of the Rules of Procedure in conjunction with the fee table from the consultation on the rules concerning procedural fees) without exceeding €20,000.

Formal Admissibility Examination

The division verifies that the defendant has duly paid the official fee for the counterclaim (Rule 27.1 of the Rules of Procedure).

If this is not the case, the defendant is notified that they have a 14-day period to pay (Rule 27.1 of the Rules of Procedure).

Otherwise, a default decision may be issued (Rule 27.3 of the Rules of Procedure).

Plaintiff’s / Proprietor’s Response

If No Counterclaim Exists

Within 2 months from notification of the defense, the plaintiff may file a reply (Rule 29(b) of the Rules of Procedure).

If a Counterclaim Exists

Defense to the Counterclaim

Within 2 months from notification of the defense and the counterclaim, the plaintiff may file a defense (Rule 29(a) of the Rules of Procedure).

The defense to the counterclaim (Rule 29A of the Rules of Procedure) must include:

  • an indication of the facts supporting this defense and a challenge to the defendant’s facts;
  • the evidence or an indication of the evidence that may be submitted;
  • arguments supporting the rejection of the counterclaim and an indication regarding each dependent claim individually justifying their validity;
  • an indication of the provisional injunctions that the court should order during the interim procedure;
  • a response to the defendant’s choices regarding the jurisdiction of the division due to this counterclaim or the assignment of a technical judge;
  • a response to the defendant’s statement regarding the amount in dispute;
  • a list of documents and witness statements (including a request for exemption from translation, in whole or in part, if relevant).

Amendment of Claims

The patent proprietor may also propose amendments to their claims within the same time limits (Rule 29(a) of the Rules of Procedure).

The proposal for amendment must include (Rule 30.1 of the Rules of Procedure):

  • one or more sets of claims (and, where applicable, the description) in the language of the patent grant;
    • if the language of the grant is not the language of the proceedings, a translation must also be provided;
    • if the patent has unitary effect, in the language of the defendant’s domicile or of the member state where infringement is alleged (if requested by the defendant);
    • an explanation regarding Articles A84 EPC, A123(2) EPC, and A123(3) EPC, concerning the validity of the claims and the reason for infringement;
    • an indication of the conditional nature of the requests (the number of conditions must not be unreasonable).

Any subsequent proposal for amendments must be authorized by the court (Rule 30.2 of the Rules of Procedure).

If another proceeding (which could amend the claims) is pending, the court must be informed, and the requests filed in that proceeding must be provided (Rule 30.3 of the Rules of Procedure).

Defendant’s Response

If no defense to the counterclaim exists

Within 1 month from notification of the claimant’s reply, the defendant may file a rejoinder (Rule 29(c) of the Rules of Procedure).

This rejoinder may only address matters raised in the claimant’s response.

If a defense to the counterclaim exists

Within 2 months from the defense to the counterclaim, the claimant may file (Rules 29(d) and 32.1 of the Rules of Procedure):

  • a rejoinder to the claimant’s reply;
  • a reply to the defense to the counterclaim;
  • where applicable, a defense to the amendment of the claims.

The defense to the amendment of the claims (Rules 32.1 and 32.2 of the Rules of Procedure) must set out the reasons why:

  • the amendments are not allowable;
  • the patent cannot be maintained with these amendments;
  • where applicable, the infringement is no longer at issue.

Claimant’s rejoinder

Within 1 month from notification of the defendant’s reply, the claimant may file a rejoinder (Rule 29(e) of the Rules of Procedure).

This rejoinder may only address matters raised in the defendant’s response.

Furthermore, a reply to the defendant’s defense regarding the amendment of the claims may be filed simultaneously (Rules 29(e) and 32.3 of the Rules of Procedure) by the patent proprietor.

Defendant’s final rejoinder regarding amendments

Within 1 month from notification of the patent proprietor’s reply, the defendant may file a rejoinder (Rule 32.3 of the Rules of Procedure).

This rejoinder may only address matters raised in the patent proprietor’s response.

Closure of the written procedure

The written procedure is closed (Rule 35a of the Rules of Procedure) at the end of the exchanges described above, by the judge-rapporteur, after informing the parties.

The judge-rapporteur sets out the dates for the interim procedure (where applicable) or confirms that no interim procedure will take place (Rule 35b of the Rules of Procedure).

Exceptionally, the judge-rapporteur may allow further exchanges within defined time limits (Rule 36 of the Rules of Procedure).

Case of the counterclaim filed before a local division

As we have seen in the context of the jurisdiction of the UPC, when a counterclaim is filed before a local/regional division, the latter may:

Thus, upon closure of the written procedure, the division must resolve this matter (Rule 37.1 of the Rules of Procedure, by issuing a reasoned decision and having previously heard the parties, if so requested).

Thus, depending on the decision:

  • the division appoints a technical judge (if this has not already been done, (Rule 37.3 of the Rules of Procedure);
  • orders a stay of proceedings in the infringement action (Rule 37.4 of the Rules of Procedure) or, otherwise, communicates to the central division the dates of the interim and oral proceedings.

If only the counterclaim is referred

If the counterclaim is referred to the central division, the latter handles this referral as a revocation action in the usual manner, but as if the written procedure were already closed: only the interim procedure must be set by the judge-rapporteur (Rule 38 of the Rules of Procedure).

Furthermore, the central division will handle the counterclaim on an expedited basis (Rule 40 of the Rules of Procedure), and the judge-rapporteur will do their utmost to set the date of the oral proceedings for the counterclaim before the date of the oral proceedings for the revocation action.

If the entire case is referred

If the entire case is referred to the central division, the latter confirms as soon as possible the dates already set for the interim procedure (Rule 39 of the Rules of Procedure) and provides the parties with directions regarding the continuation of the proceedings.

Case of an infringement action filed after a nullity action

It may happen that an infringement action is filed before a local or regional division while a nullity action is already pending before the central division (Rule 75.1 of the Rules of Procedure).

Under this assumption, and after reviewing formal admissibility issues and after recording the filing, the president of the central division is informed as soon as possible by the local or regional division (Rule 75.2 of the Rules of Procedure).

If a counterclaim for nullity is filed in the infringement action and if there is identity of parties with the nullity action already pending before the central division, and unless the parties decide otherwise, a stay of proceedings is ordered concerning the nullity action before the central division pending a decision on the jurisdiction of the division with regard to the infringement (Rule 75.3 of the Rules of Procedure), which decision will take into account the progress of the infringement action (Rule 75.3 of the Rules of Procedure). Indeed, I remind you that the local/regional division may:

Case of an infringement action filed after a declaration of non-infringement action

It may happen that an infringement action is filed before a local or regional division while a declaration of non-infringement action is already pending before the central division (Rule 76.1 of the Rules of Procedure).

Under this assumption, and after reviewing formal admissibility issues and after recording the filing, the president of the central division is informed as soon as possible by the local or regional division (Rule 76.2 of the Rules of Procedure).

If less than 3 months have elapsed between the filing of the infringement action and the declaration of non-infringement action (Rule 76.3 of the Rules of Procedure), the central division handling the declaration of non-infringement action stays the proceedings. Otherwise (i.e., more than 3 months), the presidents of the divisions agree on the conduct of the proceedings, including the possibility of a stay for the sound administration of justice (Rule 295(k) of the Rules of Procedure).

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