Patent Invalidity Action: Procedure and Deadlines in 6 Months

Overview

Here are the main phases of a first-instance written procedure for an invalidity action:

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

Claimant’s Statement

Statement

The claimant’s statement sets out the requests or claims of the party initiating the action.

This statement is governed by Rule 44 of the Rules of Procedure.

In essence, this statement must be filed with the division chosen by the claimant (provided it has jurisdiction) and must include (Rule 44 of the Rules of Procedure):

regarding the claimant: their name and place of establishment (where applicable);
the postal and email addresses and the names of the persons authorized to receive correspondence; the name of the representative;
regarding the defendant: their name and place of establishment (where applicable);
the postal and email addresses and the names of the persons authorized to receive correspondence (if this information is known); regarding the patent:
- information about the patent (including its number);
regarding the procedure:
- an indication of any past or pending proceedings before any authority (including EPO or national) relating to the patent;
- an indication of the division chosen by all parties (in the case of a local or regional division) (evidence of this agreement is required);
- an indication if the parties agree that the panel should consist of a single judge (evidence of this agreement is required);
regarding the dispute:
- the extent of the invalidity sought;
- the grounds for revocation, the facts, and the evidence on which this claim is based;
- an indication of damages if they 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).

Standing to Sue

It is important to note that there is no obligation to demonstrate standing to sue.

Therefore, it is entirely possible to have a straw man claimant.

Payment of Procedural Fee

For the statement to be valid, the claimant must pay a procedural fee (Rule 46 and 59 of the Rules of Procedure) of €20,000.

This official fee is payable only once per instance, regardless of the number of patents or parties (Rule 370.7 of the Rules of Procedure, derived from the consultation on the rules regarding procedural 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 59.1 of the Rules of Procedure): the amount of the official fee payable 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:

by email if an email address was provided for this purpose;
in accordance with the provisions of Regulation 1393/2007 or the Hague Convention of 15 November 1965.

Formal admissibility examination

As soon as possible, the division verifies that:

The patent in question is indeed a patent that has not been the subject of an opt-out (Rule 46 together with Rule 16.1 of the Rules of Procedure).
The formal conditions indicated above are duly complied with (Rule 46 together with Rule 16.2 of the Rules of Procedure).

If a formal condition mentioned just above has not been complied with, the division invites the claimant to correct the statement within 14 days from the notification of the irregularity (Rule 46 together with Rule 16.3 of the Rules of Procedure).

Otherwise, the action may be declared inadmissible (Rule 46 together with Rule 16.4 of the Rules of Procedure).

Appointment of a judge-rapporteur

The presiding judge of the panel (which has just been formed for this action, in accordance with Rule 46 together with Rule 17 of the Rules of Procedure) then appoints a judge-rapporteur.

The judge-rapporteur may very well be the presiding judge.

Upon appointment, the judge-rapporteur rules on the request for exemption from translation of the documents provided – see above (Rule 44 together with Rule 13.2 of the Rules of Procedure).

Defendant’s defense

Preliminary objections

Preliminary objections are governed 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 with Rule 19.1 of the Rules of Procedure).

These objections may relate to:

The jurisdiction of the court (including with regard to an opt-out);
The jurisdiction of the division indicated by the claimant;
The language of the proceedings.

The defendant is invited as soon as possible to respond to these objections within 14 days after notification. In the event of correction of the claimant’s statement by modifying the competent division, the judge-rapporteur refers the case to that division (Rule 48 together with 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 48 together with Rule 19.7 of the Rules of Procedure).

The decision regarding any preliminary objections raised by the defendant is issued as soon as possible after the claimant’s opportunity to respond (Rule 48 together with Rule 20.1 of the Rules of Procedure).

Preliminary objections may be joined to the main proceedings (Rule 48 together with Rule 20.1 of the Rules of Procedure).

An appeal against the decision may be filed. A stay of proceedings concerning the main action may be ordered (Rule 48 together with Rule 20.2 of the Rules of Procedure).

Defense as Such

This defense is governed by Rules 49 and 50.1 of the Rules of Procedure.

The defendant must file its defense (i.e., statement of defense) within 2 months from the service of the plaintiff’s statement (Rule 49 of the Rules of Procedure).

The defense must contain:

concerning the defendant (i.e., Rule 50.1 together with Rule 24 of the Rules of Procedure):
- 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;
concerning the dispute (i.e., Rule 50.1 together with Rule 29A of the Rules of Procedure):
- an indication of the facts supporting this defense and the defendant’s response to the plaintiff’s allegations;
- the evidence or an indication of the evidence that may be submitted;
- the arguments supporting the rejection of the counterclaim and an indication regarding each dependent claim individually justifying their validity;
- an indication of the provisional measures that the court should order during the interim procedure;
- 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).

Formal Admissibility Examination

The division verifies (Rule 54 together with 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 it has a period of 14 days to correct its defense (Rule 54 together with Rule 27.2 of the Rules of Procedure).

Otherwise, a default judgment may be issued (Rule 54 together with 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 – Rule 54 together with Rule 28 of the Rules of Procedure) and fixes a date for the oral hearing (an alternative date may be provided).

Counterclaim for Infringement

Counterclaim as Such

The counterclaim for infringement is governed by Rule 50.3 together with Rule 13.1 of the Rules of Procedure.

In particular, this counterclaim must contain (Rule 50.3 together with Rule 13.1 of the Rules of Procedure):

the nature of the plaintiff’s claim and the remedies sought;
the facts on which this claim is based (e.g., alleged acts of infringement and dates, numbers of infringed claims);
the evidence or an indication of the evidence that may be submitted;
arguments as to why the presented facts should be considered infringing (including claim interpretation);
an indication of the provisional measures that the court should order during the interim procedure;
an indication of damages if they 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).

Of course, regarding this last point, the documents and witness statements must be provided simultaneously (Rule 50.3 together with Rule 13.2 of the Rules of Procedure).

Payment of a procedural fee

For the counterclaim to be valid, the claimant must pay a procedural fee (Rule 53 in conjunction with Rules 15 and 60 of the Rules of Procedure).

This procedural fee depends on the amount of damages sought (Rule 370.2 of the Rules of Procedure in conjunction with the fee table from the consultation on the rules concerning procedural 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 to:

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

However, it appears that the judge-rapporteur sets the amount of damages at stake by way of a preliminary order during the interim procedure (Rule 60 of the Rules of Procedure): the amount of the payable fee may thus be reassessed (?).

Amendment of the patent

Any request to amend the claims must be accompanied by arguments explaining compliance with Article 84 EPC, Article 123(2) EPC, and Article 123(3) EPC, concerning the validity of the claims (Rule 50.2 of the Rules of Procedure).

Any subsequent proposal for amendments must be authorized by the court (Rules 50.2 in conjunction with 30.2 of the Rules of Procedure).

Claimant’s response

Claimant’s reply

Within two months of the defendant’s defense to the revocation action, the claimant may file a reply (Rule 51 of the Rules of Procedure).

This reply may simultaneously include a defense to the counterclaim and any defense to the amendment requested by the defendant (Rule 51 of the Rules of Procedure).

There is no specific form required for this reply.

Defense to the Counterclaim

Within 2 months from the notification of the counterclaim, the claimant must file a defense to that action (Rule 56.1 of the Rules of Procedure).

This defense must contain (Rule 56.2 together with Rule 24.1 of the Rules of Procedure):

the facts on which the defense is based;
any challenge to the defendant’s facts;
the evidence or an indication of the evidence that may be submitted;
arguments concerning the reasons why the alleged facts should not be considered as infringement (including any misinterpretation of the claims by the defendant);
an indication of the provisional measures that the court should order during the interim procedure;
a statement explaining why the defendant’s claims for damages are not justified;
a list of documents and witness statements (including a request for exemption from translation, in whole or in part, if relevant).

Defense to the Request for Amendment

The defense to the amendment of the claims (Rule 55 together with Rules 32.1 and 32.2 of the Rules of Procedure) must contain the reasons why:

the amendments are not acceptable;
the patent cannot be maintained with these amendments;
the infringement is no longer relevant.

Defendant’s Response

Reply

Within 1 month after the rejoinder, the defendant may file a reply (Rule 52 of the Rules of Procedure).

Its content must be limited to the matters raised in the claimant’s rejoinder (Rule 52 of the Rules of Procedure).

Rejoinder to the Defense to the Counterclaim

The defendant may file a rejoinder within 1 month from the notification of the defense to the counterclaim (Rule 56.3 of the Rules of Procedure).

Rejoinder to the Defense to the Amendment

The claimant may file a rejoinder within 1 month from the notification of the reply to the defense to the counterclaim (Rule 55 together with Rule 32.3 of the Rules of Procedure).

Claimant’s Reply

Reply Concerning the Counterclaim

The claimant may file a first reply within 1 month from the notification of the rejoinder to the defense to the counterclaim (Rule 55 together with Rule 32.3 of the Rules of Procedure).

Its content must be limited to the matters raised in the defendant’s rejoinder (Rule 55 together with Rule 32.3 of the Rules of Procedure).

Reply Concerning the Defendant’s Amendments

The claimant may file a second reply within 1 month from the notification of the rejoinder to the defense to the counterclaim (Rule 56.4 of the Rules of Procedure), at the same time as the reply to the defense to the amendment.

Its content must be limited to the matters raised in the defendant’s rejoinder (Rule 56.4 of the Rules of Procedure).

Closure of the written procedure

The written procedure is closed (Rule 58 in conjunction with 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 reminds the parties of the dates set for the interim procedure (where applicable) or reminds them that no interim procedure will take place (Rule 58 in conjunction with Rule 35b of the Rules of Procedure).

Exceptionally, the judge-rapporteur may authorize additional exchanges within a defined timeframe (Rule 58 in conjunction with Rule 36 of the Rules of Procedure).

Assignment of a technical judge

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

Under this assumption, a party or the judge-rapporteur may request the assignment of a technical judge (Rule 57 in conjunction with Rules 33 and 34 of the Rules of Procedure).