Rules of Procedure of the Unified Patent Court

1. The Court shall conduct proceedings in accordance with the Agreement, the Statute and these Rules, which include the Preamble to these Rules and the principles set out therein. In the event of a conflict between the provisions of the Agreement and/or the Statute on the one hand and of the Rules on the other hand, the provisions of the Agreement and/or the Statute shall prevail.

2. Where these Rules provide for the Court to perform any act other than an act exclusively reserved for a panel of the Court, the President of the Court of First Instance or the President of the Court of Appeal, that act may be performed by:

(a) the presiding judge or the judge-rapporteur of the panel to which the action has been assigned;

(b) a single legally qualified judge where the action has been assigned to a single judge;

(c) the standing judge designated pursuant to Rule 345.5.

3. References to persons in these Rules may apply to legal persons as well as natural persons. Words importing the masculine gender shall include the feminine and vice versa. Unless the contrary intention appears, words in the singular include the plural and vice versa. 

^{Relation with Agreement: Article 8(7)}

^{Relation with Statute: Article 19(3) and (4)}

1. Subject to paragraph 2, in these Rules with the exception of Rule 5 the expression “patent” and “proprietor” shall whenever appropriate include, respectively, a supplementary protection certificate as defined in Article 2(h) of the Agreement and granted in respect of the patent and the holder of such certificate.

2. References in these Rules to the language in which the patent was granted shall mean that language and not the language in which a supplementary protection certificate in respect of the patent was granted. 

Where these Rules refer to the Registry or Registrar and provide to perform any act that reference shall include – where applicable – the Deputy-Registrar and the relevant sub-registry and that act may be performed by the Registrar, the Deputy-Registrar or by a member of staff of the Registry or sub-registry of the relevant division.

1. Written pleadings and other documents shall be signed and lodged at the Registry or relevant subregistry in electronic form. Parties shall make use of the official forms available online. The receipt of documents shall be confirmed by the automatic issue of an electronic receipt, which shall indicate the date and local time of receipt.

2. Where it is not possible to lodge a document electronically for the reason that the electronic case management system of the Court has ceased to function a party may lodge a document in hard-copy form at the Registry or a sub-registry. An electronic copy of the document shall be lodged as soon as practicable thereafter.

^{Relation with Agreement: Article 44}

1. The proprietor of a European patent (including a European patent that has expired) or the applicant for a published application for a European patent (hereinafter in this Rule 5 an “application”) who wishes to opt out that patent or application from the exclusive competence of the Court in accordance with Article 83(3) of the Agreement shall lodge an Application (hereinafter in this Rule 5 an “Application to opt out”) with the Registry.

(a) Where the patent or application is owned by two or more proprietors or applicants, all proprietors or applicants shall lodge the Application to opt out. Where the person lodging an Application to opt out is not recorded as the proprietor or applicant in the registers referred to in Rule 8.5(a) and (b), respectively, the person shall lodge a declaration pursuant to paragraph 3(e).

(b) The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.

2. An Application to opt out or an Application to withdraw an opt-out pursuant to paragraph 7 (hereinafter in this Rule 5 an “Application to withdraw”) shall extend to any supplementary protection certificate based on the European patent.

(a) Where any such supplementary protection certificate has been granted at the date of lodging the Application to opt out or the Application to withdraw, the holder of the supplementary protection certificate shall, if different from the proprietor of the patent, lodge the Application to opt out or the Application to withdraw together with the proprietor.

(b) Where any such supplementary protection certificate is granted subsequent to lodging the Application to opt out, the opt-out shall take effect automatically on grant of said supplementary
protection certificate.

(c) Paragraphs 6 and 8 shall apply mutatis mutandis. For the purposes of paragraphs 6 and 8, reference to actions (i) in respect of a European patent shall apply to all supplementary protection certificates based on that European patent, and (ii) in respect of a supplementary protection certificate shall apply to the European patent on which such supplementary protection certificate is based and (iii) in respect of a supplementary protection certificate shall apply to all other supplementary protection certificates based on the same European patent.

(d) For the avoidance of doubt, it is not possible to opt out supplementary protection certificates, whether granted by the authorities of a Contracting Member State or otherwise, based on a European patent with unitary effect.

3. The Application to opt out shall contain:

(a) the name of each proprietor or applicant for the European patent or application and of the holder of any supplementary protection certificate based on the European patent in question, and all relevant postal and, where applicable, electronic addresses;

(b) the name and postal address and electronic address of (i) the representative appointed by the applicant or the proprietor in accordance with Article 48 of the Agreement or (ii) any other person lodging the Application to opt out on behalf of the proprietor or theapplicant and the mandate for lodging the Application to opt out;

(c) details of the patent and/or application including the EP publication number;

(d) details of any supplementary protection certificate granted based on the patent concerned, including the number; and

(e) for the purposes of paragraph 1(a), a declaration by or on behalf of each proprietor or applicantpursuant to Rule 8.5 that he is entitled to be registered in the national patent register.

4. Rule 8 shall not apply to Applications to opt out and to Applications to withdraw made pursuant tothis Rule 5.

5. The Registrar shall as soon as practicable enter the Application to opt out in the register. Subject to paragraph 6, the opt-out which meets the requirements laid down in this Rule shall be regarded as effective from the date of entry in the register. If the requirements recorded in the register are missing or incorrect, a correction may be lodged with the Registry. The date of entry of the correction shall be noted in the register. The opt-out shall be effective from the date of correction.

6. In the event that an action has been commenced before the Court in respect of a patent and/or an application contained in an Application to opt out prior to the date of entry of the Application to opt out in the register or prior to the date of correction pursuant to paragraph 5, the Application to opt out shall be ineffective in respect of the patent and/or application in question, irrespective of whether the action is pending or has been concluded.

7. A proprietor of a patent or an application the subject of an opt-out pursuant to this Rule may lodge an Application to withdraw in respect of the patent or application, but not in respect of different states for which the European patent has been granted or which have been designated in the application. The Application to withdraw shall contain the particulars in accordance with paragraph 3. The Registrar shall as soon as practicable enter the Application to withdraw in the register and the withdrawal shall be regarded as effective from the date of entry in the register. Paragraphs 1(a) and 5 shall apply mutatis mutandis.

8. In the event that an action has been commenced before a court of a Contracting Member State in a matter over which the Court also has jurisdiction pursuant to Article 32 of the Agreement in respect of a patent or application contained in an Application to withdraw, prior to the entry of the Application to withdraw in the register or any time before the date pursuant to paragraph 5, the Application to withdraw shall be ineffective in respect of the patent or application in question, irrespective of whether the action is pending or has been concluded.

9. Where an application for a European patent subject to an opt-out pursuant to this Rule proceeds to grant as a European patent with unitary effect the opt-out shall be deemed to have been withdrawn and the Registrar shall as soon as practicable enter the withdrawal in the register. 

10. A patent or application the subject of an Application to withdraw which has been entered on the register may not thereafter be the subject of a further Application to opt out. 

11. The Registrar shall as soon as practicable notify the European Patent Office and the national patent office of any Contracting Member States concerned of the entries in the register pursuant to paragraphs 5 and 7.

12. Applications accepted by the Registry before the entry into force of the Agreement shall be treated as entered on the register on the date of entry into force of the Agreement. 

^{Relation with Agreement: Article 83(3) and (4)}

1. Without prejudice to the lodging of an Application to opt out or withdraw an opt-out in accordance with Rule 5, the proprietor of a European patent or the applicant for a published application for a European patent or holder of a supplementary protection certificate in relation to which an Application to opt out or withdraw the opt-out is entered in the register may lodge an Application to remove the entry of an unauthorised Application to opt out or withdrawal of the opt-out from the Registry setting out the reasons.

2. The Registrar shall mark the status of the Application to opt out or withdraw the opt-out entered in the register as subject to an Application for removal. The Registrar shall decide on the Application for removal as soon as practicable. If the final decision is to remove the Application to opt out or withdrawal of an opt-out the Registrar shall delete it in the register.

3. The decision on the Application for removal may be subject to an Application for review to the President of the Court of Appeal. The Application for review shall be lodged with the Registrar in one of the official languages of the European Patent Office, within one month of the notification of the challenged decision setting out the request, facts, evidence and arguments. If the Application for review is allowable, the President of the Court of Appeal shall order the Registrar to remove the opt-out or the withdrawal of the opt-out.

1. The Registry shall as soon as practicable serve, in accordance with Part 5, Chapter 2:

(a) orders and decisions of the Court on the parties;

(b) written pleadings and other documents of a party on the other party.

Where applicable, the Registry shall inform the parties of the opportunity to reply or to take any other appropriate step in the proceedings and of any time period for so doing.

2. The Registry shall also as soon as practicable supply to the parties copies of documents referred to in these Rules and lodged with pleadings and written evidence.

3. Where the postal or electronic address for service provided by a party pursuant to these Rules has changed that party shall give notice to the Registry and to every other party as soon as such change has taken place. 

1. Written pleadings and other documents, including written evidence, shall be lodged in the language of the proceedings unless the Court or these Rules otherwise provide.

2. Where these Rules or the Court require a pleading or other document to be translated it shall not be necessary to provide a formal certification by the translator as to the accuracy of such translation unless the accuracy is challenged by a party or such certification is ordered by the Court or required by these Rules. 

1. A party shall be represented in accordance with Article 48 of the Agreement unless otherwise provided by these Rules [Rules 5, 88.4 and 378.5].

2. For the purpose of all proceedings in relation to a patent, where these Rules provide that a party performs any act or that any act be performed upon a party that act shall be performed by or upon the representative for the time being of the party. 

3. Except where these Rules provide otherwise, a party shall not communicate with the Court without informing the other party. Where such communication is in writing, the communication should be copied to the other party unless these Rules provide that the Court will supply a copy to the other party.

4. For the purposes of proceedings under these Rules in relation to the proprietor of a European patent with unitary effect, the person shown in the Register for unitary patent protection [Regulation (EU) No 1257/2012, Article 2(e)] as the proprietor shall be treated as such. If during proceedings before the Court a new proprietor is recorded in the Register for unitary patent protection, the former registered proprietor may apply to the Court pursuant to Rule 305.1(c) for the substitution of the new proprietor.

5. Subject to paragraph 6, for the purposes of proceedings under these Rules: 

(a) in relation to the proprietor of a European patent, the person entitled to be registered as proprietor under the law of each Contracting Member State in which such European patent has been validated shall be treated as the proprietor whether or not such person is in fact recorded in the register of patents maintained in such Contracting Member State (hereinafter “national patent register”); and

(b) in relation to the applicant for a European patent, the person entitled to be registered as applicant whether or not such person is in fact recorded as such in the European Patent Register kept by the European Patent Office.

(c) For the purposes of paragraph 5, there shall be a rebuttable presumption that the person shown in each national patent register and the European Patent Register kept by the European Patent Office is the person entitled to be registered as proprietor or applicant as the case may be.

6. For the purposes of proceedings pursuant to Rules 42 and 61 in relation to a European patent, the person shown in the national patent register [Rule 8.5(a)] as the proprietor shall be treated as such for each Contracting Member State or, as far as no such person is registered in a national patent register, the last person shown recorded as proprietor in the European Patent Register kept by the European Patent Office.

^{Relation with Agreement: Article 48}

1. The Court may, at any stage of the proceedings, of its own motion or on a reasoned request by a party, make a procedural order such as to order a party to take any step, answer any question or provide any clarification or evidence, within time periods to be specified.

2. The Court may disregard any step, fact, evidence or argument which a party has not taken orsubmitted in accordance with a time limit set by the Court or these Rules.

3. Subject to paragraph 4, on a reasoned request by a party, the Court may:

(a) extend, even retrospectively, a time period referred to in these Rules or imposed by the Court; and

(b) shorten any such time period.

4. The Court shall not extend the time periods referred to in Rules 198.1, 213.1 and 224.1.

Proceedings before the Court of First Instance shall consist of the following stages:

(a) a written procedure;

(b) an interim procedure, which may include an interim conference with the parties;

(c) an oral procedure which, subject to Rules 116.1 and 117, shall include an oral hearing of the parties unless the Court dispenses with the oral hearing with the agreement of the parties;

(d) a procedure for the award of damages, which may include a procedure to lay open books;

(e) a procedure for cost decisions.

^{Relation with Agreement: Articles 52, 68 and 69}

1. At any stage of the proceedings, if the Court is of the opinion that the dispute is suitable for a settlement, it may propose that the parties make use of the facilities of the Patent Mediation and Arbitration Centre (“the Centre”) in order to settle or to explore a settlement of the dispute. In particular, the judge-rapporteur shall during the interim procedure, especially at an interim conference in accordance with Rule 104(d), explore with the parties the possibility of a settlement, including through mediation and/or arbitration, using the facilities of the Centre. Parties who choose mediation in an attempt to settle a dispute are subsequently not prevented from initiating judicial proceedings before the Court in relation to that dispute by the expiry of limitation or prescription periods during the mediation process, which will stay the limitation or prescription periods until the end of the mediation process. If mediation proceedings are terminated without a dispute settlement agreement, the period shall continue to run from that moment.

2. Pursuant to Rule 365 the Court shall, if requested by the parties, by decision confirm the terms of any settlement or arbitral award by consent (irrespective of whether it was reached using the facilities of the Centre or otherwise), including a term which obliges the patent owner to limit, surrender or agree to the revocation of a patent or not to assert it against the other party and/or third parties. The parties may agree on costs to be awarded or may request the Court to decide on costs to be awarded in accordance with Rules 150 to 156 mutatis mutandis.

3. Save for the purpose of enforcing the terms of any such settlement agreement by any person no opinion expressed, suggestion made, proposal put forward, concession made or document drawn up for the purposes of settlement may be relied on as evidence by the Court or the parties in proceedings before the Court or any other court unless such matter was expressed to be made on an open basis and freely disclosable to the Court or any other court. 

^{Relation with Agreement: Articles 35, 52(2) and 79}

1. The written procedure shall consist of:

(a) the lodging of a Statement of claim (by the claimant) [Rule 13];

(b) the lodging of a Statement of defence (by the defendant) [Rules 23 and 24]; and, optionally

(c) the lodging of a Reply to the Statement of defence (by the claimant) [Rule 29(b)]; and

(d) the lodging of a Rejoinder to the Reply (by the defendant) [Rule 29(c)].

2. The Statement of defence may include a Counterclaim for revocation [Rule 25.1].

3. If a Counterclaim for revocation is lodged:

(a) the claimant and any proprietor who becomes a party pursuant to Rule 25.2 (hereinafter in this Rule 12 and Rules 29 to 32, “the proprietor”) shall lodge a Defence to the Counterclaim for revocation [Rule 29(a)], which may include an Application to amend the patent by the proprietor [Rule 30];

(b) the defendant may lodge a Reply to the Defence to the Counterclaim [Rule 29(d)]; and

(c) the claimant and the proprietor may lodge a Rejoinder to the Reply to the Defence to the Counterclaim [Rule 29(e)].

4. If an Application to amend the patent is lodged by the proprietor, the defendant shall lodge a Defence to the Application to amend the patent in the Reply to the Defence to the Counterclaim, the proprietor may lodge a Reply to the Defence to the Application to amend and the defendant may lodge a Rejoinder to such Reply [Rule 32].

5. The judge-rapporteur may allow the exchange of further written pleadings, within time periods to be specified [Rule 36].

1. The claimant shall lodge a Statement of claim with the division chosen by him [Article 33 of the Agreement] which shall contain:

(a) the name of the claimant, and, where the claimant is a corporate entity, the location of its registered office, and of the claimant’s representative;

(b) the name of the party against whom the Statement is made (the defendant), and, where the defendant is a corporate entity, the location of its registered office;

(c) postal and electronic addresses for service on the claimant and the names of the persons authorised to accept service;

(d) postal and, where available, electronic addresses for service on the defendant and the names of the persons authorised to accept service, if known;

(e) where the claimant is not the proprietor or not the only proprietor of the patent concerned, postal and where available, electronic addresses for service on the proprietor and the names and addresses of the persons authorised to accept service, if known;

(f) where the claimant is not the proprietor of the patent concerned, or not the only proprietor, evidence to show the claimant is entitled to commence proceedings [Article 47(2) and (3) of the Agreement]; 

(g) details of the patent concerned, including the number; 

(h) where applicable, information about any prior or pending proceedings relating to the patent concerned before the Court including any action for revocation or a declaration of non-infringement pending before the central division and the date of any such action, the European Patent Office or any other court or authority;

(i) an indication of the division which shall hear the action [Article 33(1) to (6) of the Agreement] with an explanation of why that division has competence; where the parties have agreed in accordance with Article 33(7) of the Agreement, the indication of the division which shall hear the action shall be accompanied by evidence of the defendant’s agreement;

(j) where applicable, an indication that the action shall be heard by a single judge [Article 8(7) of the Agreement], accompanied by evidence of the defendant’s agreement; 

(k) the nature of the claim, the order or the remedy sought by the claimant;

(l) an indication of the facts relied on, in particular: (i) one or more instances of alleged infringements or threatened infringements specifying the date
and place of each; (ii) the identification of the patent claims alleged to be infringed; 

(m) the evidence relied on [Rule 170.1], where available, and an indication of any further evidence which will be offered in support; 

(n) the reasons why the facts relied on constitute an infringement of the patent claims, including arguments of law and where appropriate an explanation of the proposed claim interpretation;

(o) an indication of any order the claimant will seek during the interim procedure [Rule 104(e)]; 

(p) where the claimant assesses that the value of the infringement action exceeds EUR500.000, an indication of the value; and

(q) a list of the documents, including any witness statements, referred to in the Statement of claim, together with any request that all or part of any such document need not be translated and/or any request pursuant to Rule 262.2 or Rule 262A.

2. The claimant shall at the same time supply a copy of each of the documents referred to in the Statement of claim. 

3. The judge-rapporteur shall decide on any request made pursuant to paragraph 1(q) as soon as practicable after his designation pursuant to Rule 18.

1. Without prejudice to Articles 49(3) to (6) of the Agreement and subject to paragraph 2 and Rules 271.7, 321 to 323, proceedings shall be conducted:

(a) in the official language or one of the official languages designated as language(s) of proceedings pursuant to Article 49(1) of the Agreement; or

(b) in a language designated as language of proceedings by a Contracting Member State pursuant to Article 49(2) of the Agreement.

2. Where a Contracting Member State hosts a local division or participates in a regional division for which several languages have been designated pursuant to Article 49(1) and/or Article 49(2) of the Agreement:

(a) subject to paragraphs 2(b) and (c), the claimant may choose as the language of proceedings any of the language(s) designated pursuant to Article 49(1) and/or Article 49(2) of the Agreement;

(b) in proceedings before a local or regional division in a Contracting Member State against a defendant who has his domicile or principal place of business in that Contracting Member State where the action could not be brought pursuant to Article 33(1)(a) of the Agreement before any other local or regional division, proceedings shall be conducted in the official language of the Contracting Member State (paragraph 1(a)). Where a designation by a Contracting Member State having several official regional languages so indicates, proceedings shall be conducted in the official language of the region in which the defendant has his domicile or principal place of business. Where there are two or more such defendants whose domicile or principle place of business has different regional languages, the claimant may choose the language from the regional languages in question. Where a designation by a Contracting Member State having several official languages so indicates, proceedings shall be conducted in the official language of the defendant. Where there are two or more such defendants with different official languages, the claimant may choose the language from the official languages in question.

(c) Where a designation of a language under Article 49(2) of the Agreement for a regional division or for one or more local division(s) hosted in a Member State so indicates, the judge-rapporteur may order in the interest of the panel to provide that judges may use in the oral proceedings the language according to paragraph 1(a) and/or to provide that the Court may make any order and deliver any decision in the language according to paragraph 1(a) together with a certified translation for the purpose of Rule 118.8 into the language according to paragraph 1(b).

3. The Registrar shall maintain a list of languages communicated by Contracting Member States pursuant to Article 49(1) and Article 49(2) of the Agreement as well as designations by Contracting Member States made pursuant to paragraph 2(b) and (c). The list shall be made publically available online.

4. The Registrar shall return any pleading lodged in a language other than the language of proceedings.

1. The claimant shall pay the fixed fee and, where applicable, the value based fee for the infringement action in accordance with Part 6. 

2. The Statement of claim shall not be deemed to have been lodged until the fixed fee and, where applicable, the value based fee for the infringement action has been paid, unless otherwise provided.

^{Relation with Agreement: Articles 36(3), 70 and 71}

1. The Registry shall as soon as practicable check whether the patent concerned is the subject of an optout pursuant to Article 83(3) of the Agreement and Rule 5. In the event of an opt-out the Registry shall as soon as practicable inform the claimant who may withdraw or amend the Statement of claim as appropriate.

2. The Registry shall, as soon as practicable after the lodging of the Statement of claim, examine whether the requirements of Rules 13.1 (a) to (j), .2, 14 and 15.1 have been complied with.

3. If the claimant has not complied with the requirements referred to in paragraph 2, the Registry shall as soon as practicable invite the claimant to:

(a) correct the deficiencies within 14 days of service of such notification; and

(b) where applicable, pay the fee for the infringement action within said 14 days.

4. The Registry shall at the same time inform the claimant that if the claimant fails to correct the deficiencies or pay the fee within the time stated, a decision by default may be given, in accordance with Rule 355.

5. If the claimant fails to correct the deficiencies or pay the fee, the Registry shall inform a judge of the division who may reject the action as inadmissible by a decision by default. The judge may give the claimant an opportunity to be heard beforehand.

1. If the requirements referred to in Rule 16.2 or 16.3 have been complied with, the Registry shall as soon as practicable:

(a) record the date of receipt of the Statement of claim and attribute an action number to the file;

(b) record the file in the register; and

(c) inform the claimant of the action number of the file and the date of receipt.

2. The action shall be assigned to a panel of a division according to Rule 345.3. Where requested by the parties the action shall be assigned to a single judge in accordance with Rule 345.6.

3. The following shall determine the distribution of actions between the seat of the central division and its sections.

(a) Where an action involves a single patent having a single classification, the Registry shall allocate the action to the seat or the section of the central division appropriate to the classification of the patent according to Annex II of the Agreement. The Registry shall assign the action to a panel in accordance with Rule 345.3.

(b) Where an action involves more than one patent and a majority of the patents have a single classification appropriate to the seat or a single section of the central division according to Annex II of the Agreement, the Registry shall allocate the action to the seat or that section of the central division. The Registry shall assign the action to a panel in accordance with Rule 345.3.

(c) Where neither paragraph (a) nor (b) applies, especially where (i) the action involves a single patent having more than one classification or (ii) where the action involves more than one patent and no majority of the patents have a single classification corresponding to the seat or to one of the sections of the central division, the Registry shall assign the action in accordance with Rule 345.3 to the panel at the seat or the section appropriate to the first classification of either the single patent or, where the action involves more than one patent, the patent first listed in the Statement of claim, according to Annex II of the Agreement. If the presiding judge of the respective panel considers that the reference of the action is appropriate, he shall accept it. If he considers otherwise, he shall instruct the Registry to refer the action in accordance with Rule 345.3 to the presiding judge of a panel of either the seat or the other section of the central division he considers appropriate, who shall likewise consider whether the re-allocation of the action is appropriate. If that presiding judge considers otherwise, he shall inform the President of the Court of First Instance, who shall allocate the action to the seat or the section of the central division he considers appropriate. The Registry shall assign the action to a panel in accordance with Rule 345.3.

4. The action shall be regarded as having commenced before the Court as from the date of receipt attributed to the Statement of claim. 

^{Relation with Agreement: Article 7(2), Article 10}

The presiding judge of the panel to which the action has been assigned [Rule 17.2] shall designate one legally qualified judge of the panel as judge-rapporteur. The presiding judge may designate himself as judge-rapporteur. The Registry shall as soon as practicable notify the claimant and defendant of the identity of the judge-rapporteur.

1. Within one month of service of the Statement of claim, the defendant may lodge a Preliminary objection concerning:

(a) the jurisdiction and competence of the Court, including any objection that an opt-out pursuant to Rule 5 applies to the patent that is the subject of the proceedings;

(b) the competence of the division indicated by the claimant [Rule 13.1(i)];

(c) the language of the Statement of claim [Rule 14].

2. A Preliminary objection shall contain:

(a) particulars in accordance with Rule 24(a) to (c);

(b) the decision or order sought by the defendant;

(c) the grounds upon which the Preliminary objection is based; and

(d) where appropriate the facts and evidence relied on.

3. The Preliminary objection shall be drawn up in the language pursuant to Rule 14.

4. If the action has been commenced before a regional division the defendant may by a Preliminary objection request a transfer of the action to the central division pursuant to Article 33(2) of the Agreement. The Preliminary objection shall in such a case contain all facts and evidence supporting the existence of the same infringement in the territories of three or more regional divisions.

5. The Registry shall as soon as practicable invite the claimant to comment on the Preliminary objection. Where applicable, the claimant may of his own motion correct any deficiency [paragraph 1(b) or (c)], within 14 days of service of notification of the Preliminary objection. Alternatively the claimant may submit written comments within the same period. The judge-rapporteur shall be informed of any correction made or written comments submitted by the claimant. If the deficiency referred to in paragraph 1(b) is corrected and the claimant has indicated another division, which is competent, the judge-rapporteur shall refer the action to the division indicated by the claimant.

6. The period for lodging the Statement of defence [Rule 23] shall not be affected by the lodging of a Preliminary objection, unless the judge-rapporteur decides otherwise.

7. The defendant’s failure to lodge a Preliminary objection within the time period referred to in paragraph 1 shall be treated as a submission to the jurisdiction and competence of the Court and the competence of the division chosen by the claimant.

Commentary

In UPC_CFI_163/2024 – Decision of 23 May 2025, the Paris Local Division clarified the distinction between jurisdiction (Articles 31–33 UPCA) and the territorial scope of decisions (Art. 34 UPCA). It held that objections based on Art. 34 UPCA are not preliminary objections under Rule 19 RoP and are therefore admissible even if raised later in the proceedings.

On the merits, the Court confirmed that the UPC has jurisdiction over such claims in line with the CJEU’s decision in BSH v. Electrolux and previous UPC rulings (e.g. UPC_CFI_355/2023, UPC_CFI_702/2024, UPC_CFI_792/2024). 

1. As soon as practicable after the expiry of the period referred to in Rule 19.5, the judge-rapporteur shall decide the Preliminary objection. The judge-rapporteur shall give the parties an opportunity to be heard. The decision shall include instructions to the parties and to the Registry concerning the next step in the proceedings.

2. Where the Preliminary objection is to be dealt with in the main proceedings, the judge-rapporteur shall inform the parties.

1. A decision of the judge-rapporteur allowing the Preliminary objection may be appealed pursuant to Rule 220.1(a). An order of the judge-rapporteur rejecting the Preliminary objection may only be appealed pursuant to Rule 220.2.

2. If an appeal is lodged, proceedings at first instance may be stayed by the judge-rapporteur or the Court of Appeal on a reasoned request by a party.

1. The value of the infringement action shall be determined by the judge-rapporteur under Rule 370.6, taking into account the value as assessed by the parties, by way of an order during the interim procedure. 

2. Where the value of the infringement action exceeds EUR 500.000, the claimant shall pay a valuebased fee for the infringement action, in accordance with Part 6. Rule 16.3 to .5 shall apply mutatis mutandis.

The defendant shall lodge a Statement of defence within three months of service of the Statement of claim. 

The Statement of defence shall contain:

(a) the names of the defendant and of the defendant’s representative;

(b) postal and electronic addresses for service on the defendant and the names and addresses of the persons authorised to accept service;

(c) the action number of the file;

(d) an indication whether the defendant has lodged a Preliminary objection [Rule 19];

(e) an indication of the facts relied on, including any challenge to the facts relied on by the claimant;

(f) the evidence relied on [Rule 170.1], where available, and an indication of any further evidence which will be offered in support;

(g) the reasons why the action shall fail, arguments of law and any argument arising from the provisions of Article 28 of the Agreement and where appropriate any challenge to the claimant’s proposed claim interpretation;

(h) an indication of any order the defendant will seek in respect of the infringement action during the interim procedure [Rule 104(e)];
(i) a statement whether the defendant disputes the claimant’s assessment of the value of the infringement
action and the grounds for such dispute; and
(j) a list of the documents, including any witness statements, referred to in the Statement of
defence together with any request that all or part of any such document need not be translated
and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis.

1. If the Statement of defence includes an assertion that the patent alleged to be infringed is invalid the Statement of defence shall include a Counterclaim against the proprietor of the patent for revocation of said patent in accordance with Rule 42. The Counterclaim for revocation shall contain:

(a) an indication of the extent to which revocation of the patent is requested; 

(b) one or more grounds for revocation, which shall as far as possible be supported by arguments of law, and where appropriate an explanation of the defendant’s proposed claim construction; 

(c) an indication of the facts relied on;

(d) the evidence relied on, where available, and an indication of any further evidence which will be offered in support;

(e) an indication of any order the defendant will seek during the interim procedure [Rule 104(e)]; 

(f) a statement of his position, if any, on the options provided for in Article 33(3) of the Agreement and Rule 37.4; 

(g) a list of the documents, including any witness statements, referred to in the Counterclaim for revocation together with any request that all or part of any such documents need not be translated and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis; and

(h) insofar as the proprietor of the patent is not claimant in the infringement proceedings, the information required by Rule 13.1(b) and (d) in respect of said proprietor.

2. Where the claimant is not the proprietor or not the only proprietor of the patent concerned, the Registry shall as soon as practicable serve a copy of the Counterclaim for revocation on the relevant proprietor in accordance with Rule 13.1(e) and shall supply a copy of each document referred to in paragraph 1(h). Rule 271 shall apply mutatis mutandis. The proprietor in question shall become a party to the revocation proceedings and shall be treated as defendant in all subsequent proceedings. The proprietor shall provide details pursuant to Rule 13.1(e) if not already provided by the claimant.

Commentary

In UPC_CFI_359/2023 (Fujifilm Corporation vs. Kodak GmbH et al., decision of 2 April 2025). it was stated that in accordance with R. 24(g) RoP, R.25(1)(b) and (c) RoP, if a Defendant refers to public prior use he has to submit all and sufficient facts in his Statement of Defence. New facts submitted in the Defendant’s rejoinder and reply to the counterclaim have to be disregarded. The analysis of the facts referred to by the Defendant is to be limited to the facts which had been presented in the Statement of Defence and the Counterclaim for Revocation. It is in those briefs that the defendant has to submit reasons why the action shall fail, R. 24(g) RoP and the grounds for revocation have to be presented comprehensively, R. 25(1)(b) and (c) RoP whereas the following briefs have to limit themselves to a response to matters raised in the Reply, R. 29(c) and (d) RoP.  If the defendant were allowed to submit abundant new facts in its rejoinder and reply to the counterclaim alone, this would call for additional briefs by the claimant so as to be able to respond to such fresh arguments and allegations leading to a new round of briefs not foreseen in the front-loaded procedure enshrined in the RoP. In case a defendant needs more time to clarify facts it will have to submit a request to extend the time limits for the respective brief. Otherwise submitting fresh facts and arguments in the rejoinder alone would amount to a welcome opportunity to hold back points and avoid the claimant having an opportunity to respond in the written procedure.

The defendant shall pay the fee for the Counterclaim for revocation in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis. 

1. The Registry shall, as soon as practicable after the lodging of the Statement of defence: 

(a) examine whether the requirements of Rule 24(a) to (d) have been complied with; and

(b) if the Statement of defence includes a Counterclaim for revocation, examine whether the requirements of Rule 25.1(g) and (h), and the obligation to pay the fee pursuant to Rule 26 has been complied with.

2. If the Registry considers that the Statement of defence or the Counterclaim for revocation does not comply with any of the requirements referred to in paragraph 1, it shall as soon as practicable invite the defendant to:

(a) correct the deficiencies noted, within 14 days of service of such notification; and 

(b) where applicable, pay the fee for the Counterclaim for revocation, within said 14 days.

3. The Registry shall at the same time inform the defendant that if the defendant fails to correct the deficiencies or pay the fee within the time stated, a decision by default may be given, in accordance with Rule 355. 

4. If the defendant fails to correct the deficiencies or to pay the fee for the Counterclaim for revocation, as appropriate, within said 14 days, the Registry shall inform the judge-rapporteur who may give a decision by default. He may give the defendant an opportunity to be heard beforehand.

As soon as practicable after service of the Statement of defence, the judge-rapporteur shall, after consulting the parties, set a date and time for an interim conference (where necessary [Rule 101.1]) and set a date for the oral hearing. The judge-rapporteur may set one alternative date.

(a) Within two months of service of a Statement of defence which includes a Counterclaim for revocation, the claimant shall lodge a Defence to the Counterclaim for revocation together with any Reply to the Statement of defence and any Application to amend the patent pursuant to Rule 30, if applicable.

(b) Within two months of service of a Statement of defence which does not include a Counterclaim for revocation, the claimant may lodge a Reply to the Statement of defence.

(c) Within one month of service of a Reply to the Statement of defence which does not include a Counterclaim for revocation the defendant may lodge a Rejoinder to the Reply to the Statement of defence. The Rejoinder to the Reply to the Statement of defence shall be limited to a response to the matters raised in the Reply to the Statement of defence.

(d) Within two months of service of the Defence to Counterclaim the defendant may lodge a Reply to the Defence to the Counterclaim together with any Rejoinder to the Reply to the Statement of defence and any Defence to an Application to amend the patent pursuant to Rule 32, if applicable.

(e) Within one month of the service of the Reply to the Defence to the Counterclaim, the claimant may lodge a Rejoinder to the Reply together with any Reply to the Defence to an Application to amend the patent pursuant to Rule 32, if applicable. The Rejoinder to the Reply to the Statement of defence shall be limited to a response to the matters raised in the Reply to the Statement of defence.

(f) Where the claimant is not the proprietor of the patent, all references to the claimant in this Rule 29 regarding an Application to amend the patent shall be read as including the proprietor.

The Defence to the Counterclaim for revocation shall contain:

(a) an indication of the facts relied on, including any challenge to the facts relied on by the defendant;

(b) the evidence relied on [Rule 170.1], where available, and an indication of any further evidence which will be offered in support;

(c) the reasons why the Counterclaim for revocation shall fail, including arguments of law and any argument as to why any dependent claim of the patent is independently valid;

(d) an indication of any order the claimant and the proprietor will seek in respect of the revocation action at the interim conference [Rule 104(e)];

(e) the claimant’s and the proprietor’s response to the defendant’s choice of option, if any, provided for in Article 33(3) of the Agreement and Rule 37.4; and

(f) a list of the documents, including any witness statements, referred to in the Defence to the Counterclaim together with any request that all or part of any such document shall not be
translated and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis.

1. The Defence to the Counterclaim for revocation may include an Application by the proprietor of the patent to amend the patent which shall contain:

(a) the proposed amendments of the claims of the patent concerned and/or specification, including where applicable and appropriate one or more alternative sets of claims (auxiliary requests), in the language in which the patent was granted; where the language of the proceedings [Rule 14.3] is not the language in which the patent was granted, the proprietor shall lodge a translation of the proposed amendments in the language of the proceedings, and where the patent is a European patent with unitary effect in the language of the defendant’s domicile in a Member State of the EU or of the place of the alleged infringement or threatened infringement in a Contracting Member State if so requested by the defendant;

(b) an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid and, if applicable, why they are infringed; and 

(c) an indication whether the proposals are conditional or unconditional; the proposed amendments, if conditional, must be reasonable in number in the circumstances of the case.

2. Any subsequent request to amend the patent may only be admitted into the proceedings with the permission of the Court.

3. Where other proceedings involving the patent subject to an Application to amend the patent are pending, the claimant shall notify the Court or the authority in question that such an Application has been made and provide the information required in paragraph 1(a).

Commentary

R. 30.1 – Applicability of R. 80 EPC

In UPC_CFI_355/2023 (Fujifilm Corporation v. Kodak GmbH et al., decision of 28 January 2025) it was stated that R. 80 EPC (by way of conjunction with Art. 24(1)c) UPCA; R. 80 EPC: “[…] the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition […]”) is not applicable to claim amendments filed before the UPC, because R. 80 EPC is a regulation limited to opposition proceedings before the EPO. The Rules of Procedure of the UPC are lex specialis in this regard and contain a complete regulation on the prerequisites for admissibility of an application to amend the patent. Accordingly, there is also no regulation gap that must be closed by transferring the regulations of R. 80 EPC to revocation proceedings before the UPC. 

In this regard, it may become necessary and appropriate to amend a dependent claim as well to maintain conciseness of the claims in view of proposed amendments to an independent claim of a patent in reply to an invalidity attack. Conciseness is one of the criteria to be met by amended claims under Art. 84 EPC (which must be fulfilled by the amendments according to R. 30.1 RoP). I.e., amendments to dependant claims are occasioned by the admissibility requirements of R. 30.1 RoP, if maintaining a dependant claim in its granted form would lead to a clarity issue. 

Also, not applicable is the case law of the EPO’s Boards of Appeal by which amendments are inadmissible that do not constitute a reaction to an invalidity attack. According to said case law, the addition of a new dependent claim during opposition proceedings is generally forbidden under R. 80 EPC, if such an additional dependent claim does not limit the related independent claim and therefore is unsuitable to overcome a ground for opposition (cf. Case Law of the Boards of Appeal, version of June 2024, IV.C.5.1.2.c.i).

With regard to the above statements from decision UPC_CFI_355/2023, it should be noted that this is the only (and only first-instance) decision on R. 80 EPC to date. Even though this decision takes a very clear view on the non-applicability of R. 80 EPC, a different view by another division or the Court of Appeal cannot be ruled out.

R. 30.1 (b)

In UPC_CFI_359/2023 (Fujifilm Corporation vs. Kodak GmbH et al., decision of 2 April 2025), it was stated that as far as a claimant wishes to defend dependant claims separately, such defence is inadmissible because claimant did not file a proper application to amend the patent pursuant to R. 30 RoP in this regard. Further, the claimant or patent proprietor, respectively, has to demonstrate and prove the patentability of the new independent claim in case the said new independent claim is a combination of the originally granted claim 1 and one or more of the dependent claims, because during the procedure up to grant, the patentability of the subject-matter of dependent claims is not necessarily assessed independently from that of the relevant independent claim because dependent claims are supposed to concern particular embodiments of the invention only as laid down by its essential features in the relevant independent claim (cf. R. 43.3 of the Implementing Regulations to the Convention on the grant of European Patents). Concerning added matter, the wording of a claim can be corrected in a way that it corresponds to the description even in a case where the wording of the incorrect claim as such is unambiguous.

1. Within two months of service of an Application to amend the patent, the defendant shall lodge a Defence to the Application to amend the patent setting out whether he opposes the Application to amend the patent and, if so, why:

(a) the proposed amendments are not allowable; and

(b) the patent cannot be maintained as requested.

2. Where appropriate in view of the proposed amendments, the Defence to the Application to amend the patent may contain submissions in accordance with Rule 44(d) to (h) and alternative non-infringement submissions.

3. The proprietor may lodge a Reply to the Defence to the Application to amend the patent within one month of service of the Defence and the defendant may within one month of the service of the Reply lodge a Rejoinder to the Reply. The Rejoinder shall be limited to the matters raised in the Reply.

1. Any party to the proceedings may lodge an Application for allocating a technically qualified judge to the panel which shall contain an indication of the relevant field of technology.

2. The Application shall be lodged as early as possible in the written procedure. An Application lodged after the closure of the written procedure [Rule 35] shall only be granted if justified in view of changed circumstances, such as new submissions presented by the other party, and allowed by the Court. 

3. If the requirements of paragraphs 1 and 2 have been complied with, the President of the Court of First Instance shall allocate a technically qualified judge to the panel, after consulting the judge-rapporteur.

1. The judge-rapporteur may at any time during the written procedure, after consulting the presiding judge and the parties, request the President of the Court of First Instance to allocate a technically qualified judge to the panel.

2. Where a technically qualified judge is allocated to the panel, the judge-rapporteur may at any time consult the technically qualified judge.

Following the exchange of written pleadings in accordance with Rule 12.1 and, where applicable, in accordance with Rule 12.2 to .4, the judge-rapporteur shall:

(a) inform the parties of the date on which he intends to close the written procedure, without prejudice to Rule 36; and

(b) where an interim conference is necessary [Rules 28 and 101​​​​​​​.1], confirm the date and the time set for the interim conference [Rules 28] or inform the parties that an interim conference will not be held.​​​​​​​

Without prejudice to the powers of the judge-rapporteur pursuant to Rule 110.1, on a reasoned request by a party lodged before the date on which the judge-rapporteur intends to close the written procedure [Rule 35(a)], the judge-rapporteur may allow the exchange of further written pleadings, within a period to be specified. Where the exchange of further written pleadings is allowed, the written procedure shall be deemed closed upon expiry of the specified period. 

1. As soon as practicable after the closure of the written procedure the panel shall decide by way of order how to proceed with respect to the application of Article 33(3) of the Agreement. The parties shall be - 37 - given an opportunity to be heard [Rule 264]. The panel shall set out in its order brief reasons for its decision.

2. The Panel may by order take an earlier decision if appropriate having considered the parties’ pleadings and having given the parties an opportunity to be heard [Rule 264].

3. Where the panel decides to proceed in accordance with Article 33(3)(a) of the Agreement, the judgerapporteur shall request the President of the Court of First Instance to allocate to the panel a technically qualified judge if not already allocated pursuant to Rules 33 and 34.

4. Where the panel decides to proceed in accordance with Article 33(3)(b) of the Agreement, the panel may stay the infringement proceedings pending a final decision in the revocation proceedings and shall stay the infringement proceedings where there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision in the revocation proceedings.

5. Where the panel decides to proceed in accordance with Article 33(3)(b) of the Agreement and not to stay the proceedings, the judge-rapporteur of the regional or local division shall communicate to the central division the dates set for the interim conference and for the oral hearing according to Rule 28.

When a Counterclaim for revocation is referred to the central division, it shall be dealt with as follows:

(a) Rule 17.2 and .3 shall apply mutatis mutandis;

(b) Rule 18 shall apply mutatis mutandis: the presiding judge of the panel to which the Counterclaim for revocation has been assigned shall designate one legally qualified judge of the panel as judgerapporteur;

(c) The judge-rapporteur shall give any further directions necessary for the future conduct of the written procedure before the central division;

(d) Rule 28 shall apply mutatis mutandis: the judge-rapporteur shall after consulting the parties set a date and a time for the interim conference (where necessary [Rule 264 and 101]) and set a date, and one alternative date, for the oral hearing.

1. Where the language of the proceedings before the local division or the regional division which referred the Counterclaim for revocation to the central division is not the language in which the patent was granted, the judge-rapporteur may order that the parties lodge, within a period of one month, a translation in the language in which the patent was granted of any written pleadings and such other documents lodged during the written procedure as the judge-rapporteur may direct.

2. Where appropriate, the judge-rapporteur may specify in his order that only excerpts of parties’ written pleadings and other documents shall be translated.

3. Where the language of the proceedings before the local division or the regional division is the language in which the patent was granted the pleadings served in accordance with Rules 24, 25, 29, 29a, 30 and 32 shall stand.

The judge-rapporteur shall accelerate proceedings before the central division where 

(a) an Application for provisional measures has been lodged [Rule 206]; or

(b) the regional or local division has referred the Counterclaim for revocation to the central division and where the infringement action has not been stayed. 

In the latter case, the judge-rapporteur of the panel of the central division shall endeavour to set a date for the oral hearing on the revocation action prior to the date of the oral hearing of the infringement action.

When an action is referred to the central division under Article 33(3)(c) of the Agreement, it shall be dealt with as follows:

(a) Rule 17.2 and .3 shall apply mutatis mutandis. The parties may request that the action be heard by a single judge;

(b) Rule 18 shall apply mutatis mutandis: the presiding judge of the panel to which the action has been assigned shall designate one judge of the panel as judge-rapporteur;

(c) dates already set under Rule 28 shall be confirmed wherever possible;

(d) Rule 39 shall apply mutatis mutandis: the judge-rapporteur may order that the parties lodge a translation in the language in which the patent was granted of any written pleadings lodged during the written procedure; where appropriate, the judge-rapporteur may specify in his order that only excerpts of parties’ written pleadings and other documents shall be translated. Otherwise the pleadings lodged during the written procedure shall stand;

(e) The judge-rapporteur shall give any further directions necessary for the future conduct of the written procedure before the central division.

1. Any action for the revocation of a patent shall be directed against the proprietor of the patent.

2. If the action for revocation is directed against the proprietor in accordance with Rule 8.6 (“the registered proprietor”) but the registered proprietor is not a proprietor within the meaning of Rule 8.5(a) or (b) (“the Rule 8.5 proprietor”) each such registered proprietor shall as soon as practicable after service of the Statement for revocation apply to the Court pursuant to Rule 305.1(c) for the substitution of the registered proprietor by the Rule 8.5 proprietor.

^{Relation with Agreement: Articles 47(5) and 65(1)}

1. The written procedure shall consist of:

(a) the lodging of a Statement for revocation (by the claimant) [Rule 44]; and

(b) the lodging of a Defence to revocation (by the defendant) [Rule 49]; and optionally

(c) the lodging of a Reply to the Defence to revocation (by the claimant) [Rule 51];

(d) the lodging of a Rejoinder to the Reply (by the defendant) [Rule 52].

2. The Defence to revocation may include:

(a) an Application to amend the patent; and

(b) a Counterclaim for infringement by the proprietor of the patent.

3. If an Application to amend the patent is lodged, the claimant shall lodge a Defence to the Application to amend the patent. The defendant may lodge a Reply to the Defence to the Application. The claimant may lodge a Rejoinder to the Reply. The Rejoinder shall be limited to a response to the matters raised in the Reply.

4. If a Counterclaim for infringement is lodged, the claimant shall lodge a Defence to the Counterclaim for infringement [Rule 56], the defendant may lodge a Reply to the Defence to the Counterclaim [Rule 56.3] and the claimant may lodge a Rejoinder to the Reply [Rule 56.4].

5. Rule 12.5 shall apply.

The claimant shall, subject to point (b), lodge a Statement for revocation at the Registry in accordance with Article 7(2) of the Agreement and Annex II thereto. The Statement for revocation shall contain:

(a) particulars in accordance with Rule 13.1(a) to (d) and (g), (h);

(b) where the parties have agreed to bring the action before a local division or a regional division in accordance with Article 33(7) of the Agreement, an indication of the division which shall hear the action, accompanied by evidence of the defendant’s agreement;

(c) where applicable, an indication that the action shall be heard by a single judge [Article 8(7) of the Agreement], accompanied by evidence of the defendant’s agreement; 

(d) an indication of the extent to which revocation of the patent is requested; 

(e) one or more grounds for revocation, which shall as far as possible be supported by arguments of law, and where appropriate an explanation of the claimant’s proposed claim construction;

(f) an indication of the facts relied on;

(g) the evidence relied on, where available, and an indication of any further evidence which will be offered in support;

(h) an indication of any order the claimant will seek during the interim procedure [Rule 104(e)];

and

(i) a list of the documents, including any witness statements, referred to in the Statement for revocation together with any request that all or part of any such document need not be translated and/or any request pursuant to Rule 262.2 and Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis.

1. Subject to paragraph 2, the Statement for revocation shall be drawn up in the language in which the patent was granted.

2. Where the parties have agreed to bring the action before a local or a regional division in accordance with Article 33(7) of the Agreement, the Statement for revocation shall be drawn up in one of the languages referred to in Rule 14.1(a) and (b).

^{Relation with Agreement: Article 49}

The claimant shall pay the fee for the revocation action in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

^{Relation with Agreement: Articles 70 and 71}

1. Rules 16 to 18 shall apply mutatis mutandis.

2. The Registrar shall notify the European Patent Office that the patent in question is subject to an action for revocation.

^{Relation with Agreement: Articles 10 and 33}

Rule 19.1 to .3 and .5 to .7 as well as Rules 20 and 21 shall apply mutatis mutandis.

1. The defendant shall lodge a Defence to revocation within two months of service of the Statement for revocation.

2. The Defence to revocation may include: 

(a) an Application to amend the patent;

(b) a Counterclaim for infringement.

1. The Defence to revocation shall contain the matters referred to in Rule 24(a) to (c). Rule 29A(a) to (d) and (f) shall apply mutatis mutandis.

2. Any Application to amend the patent shall contain the matters referred to in Rule 30.1(a), (c) and an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid. Rule 30.2 shall apply.

3. Any Counterclaim for infringement shall contain the matters referred to in Rule 13.1(k) to (q). Rule 13.2 and .3 shall apply.

Within two months of service of the Defence to revocation the claimant may lodge a Reply to the Defence to revocation together with any Defence to an Application to amend the patent pursuant to Rule 43.3 and 55 as well as any Defence to the Counterclaim for infringement pursuant to Rule 56.1, if applicable.

Within one month of the service of the Reply the defendant may lodge a Rejoinder to the Reply to the Defence to revocation together with any Reply to the Defence to an Application to amend the patent pursuant to Rule 43.3 and 55 as well as any Reply to the Defence to the Counterclaim for infringement pursuant to Rule 56.3, if applicable. The Rejoinder shall be limited to a response to the matters raised in the Reply.

The defendant shall pay the fixed fee and, where applicable, the value based fee for the Counterclaim for infringement in accordance with Part 6. Rule 15 and Rule 16.3 to 5 shall apply mutatis mutandis.

Rules 27 and 28 shall apply mutatis mutandis.

Rule 32 shall apply mutatis mutandis.

1. Within two months of service of a Counterclaim for infringement, the claimant shall lodge a Defence to the Counterclaim for infringement.

2. The Defence to the Counterclaim for infringement shall contain the matters referred to in Rule 24.1(e) to (h) and (j) and a statement whether the claimant disputes the defendant’s assessment of the value of the Counterclaim pursuant to Rule 50.3 and the reasons for such dispute.

3. The defendant may lodge a Reply to the Defence to the Counterclaim for infringement within one month.

4. Within one month of the service of the Reply to the Defence to the Counterclaim for infringement the claimant may lodge a Rejoinder to the Reply together with any Rejoinder to the Reply to the Defence to the Application to amend the patent pursuant to Rule 43.3 and 55. The Rejoinder shall be limited to matters raised in the Reply.

Rules 33 and 34 shall apply mutatis mutandis.

Rules 35 and 36 shall apply mutatis mutandis.

1. The value of the Counterclaim for infringement shall be determined by the judge-rapporteur under Rule 370.6, taking into account the value as assessed by the parties, by way of an order during the interim procedure.

2. Where the value of the Counterclaim for infringement exceeds EUR 500.000, the defendant shall pay a value-based fee in accordance with Part 6. Rule 16.3 to .5 shall apply mutatis mutandis.

1. A declaration that the performance of a specific act does not, or a proposed act would not, constitute an infringement of a patent may be made by the Court in proceedings between the person doing or proposing to do the act and the patent proprietor or licensee entitled to commence infringement proceedings pursuant to Article 47 of the Agreement, if the patent proprietor or such licensee has asserted that the act is an infringement, or, if no such assertion has been made by the patent proprietor or licensee, if:

(a) that person has applied in writing to the proprietor or licensee for a written acknowledgment to the effect of the declaration claimed, and has provided him with full particulars in writing of the act in question; and

(b) the proprietor or licensee has refused or failed to give any such acknowledgment within one month. 

2. The action for a declaration shall be directed against the proprietor of the patent or the licensee who has asserted an infringement or refused or failed to give an acknowledgement pursuant to paragraph 1(b).

3. If the action for a declaration of non-infringement is directed against the proprietor of the patent in accordance with Rule 8.6 (“the registered proprietor”) but the registered proprietor is not a proprietor within the meaning of Rule 8.5(a) or (b) (“the Rule 8.5 proprietor”) each such registered proprietor shall as soon as possible after service of the Statement for a declaration of non-infringement apply to the Court pursuant to Rule 305.1(c) for the substitution of the registered proprietor by the Rule 8.5 proprietor.

1. The written procedure shall consist of:

(a) the lodging of a Statement for a declaration of non-infringement (by the claimant) [Rule 63];

(b) the lodging of a Defence to the Statement for a declaration of non-infringement (by the defendant) [Rules 67 and 68]; and, optionally

(c) the lodging of a Reply to the Defence to the Statement for a declaration of non-infringement [Rule 69];

(d) the lodging of a Rejoinder to the Reply [Rule 69]. 

2. Rule 12.5 shall apply.

The claimant shall, subject to point (b), lodge at the Registry in accordance with Article 33(4), Article 7(2) of the Agreement and Annex II thereto, a Statement for a declaration of non-infringement which shall contain:

(a) particulars in accordance with Rule 13.1(a) to (h) and particulars confirming that the requirements of Rule 61 are met;

(b) where the parties have agreed to bring the action before a local division or a regional division in accordance with Article 33(7) of the Agreement, an indication of the division which shall hear the action, accompanied by evidence of the defendant’s agreement;

(c) where applicable, an indication that the action shall be heard by a single judge [Article 8(7) of the Agreement], accompanied by evidence of the defendant’s agreement;

(d) the declaration sought by the claimant;

(e) the reasons why the performance of a specific act does not, or a proposed act would not, constitute an infringement of the patent concerned, including arguments of law and where appropriate an explanation of the claimant’s proposed claim construction;

(f) an indication of the facts relied on;

(g) the evidence relied on, where available, and an indication of any further evidence which will be offered in support;

(h) an indication of any order the claimant will seek at the interim conference [Rule 104(e)]; 

(i) where the claimant assesses that the value of the declaratory action exceeds EUR 500.000, an indication of the value; and

(j) a list of the documents, including any witness statements, referred to in the Statement for a declaration together with any request that all or part of any such document need not be translated and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis.

Rule 45 shall apply mutatis mutandis.

Rules 16 to 18 shall apply mutatis mutandis.

Rule 19.1 to .3 and .5 to .7 as well as Rules 20 and 21 shall apply mutatis mutandis.

The defendant shall lodge a Defence to the Statement for a declaration of non-infringement within two months of service of the Statement for a declaration of non-infringement. 

The Defence to the Statement for a declaration of non-infringement shall contain the matters referred to in Rule 24(a) to (j). Rule 13.2 and .3 shall apply mutatis mutandis.

1. The claimant may lodge a Reply to the Defence to the Statement for a declaration of non-infringement within one month.

2. The defendant may lodge a Rejoinder to the Reply within one month of service of the Reply. The Rejoinder shall be limited to the matters raised in the Reply.

The claimant shall pay the fixed fee and, where applicable, the value based fee for the action for a declaration of non-infringement in accordance with Part 6. Rule 15.2 and Rule 16.3 to .5 shall apply mutatis mutandis.

Rules 27 and 28 shall apply mutatis mutandis.

Rules 33 and 34 shall apply mutatis mutandis.

Rules 35 and 36 shall apply mutatis mutandis.

1. The value of the action for a declaration of non-infringement shall be determined by the judgerapporteur under Rule 370.6, taking into account the value as assessed by the parties, by way of an order during the interim procedure.

2. Where the value exceeds EUR500.000 the claimant shall pay a value-based fee for the action for a declaration of non-infringement in accordance with Part 6. Rule 16.3 to .5 shall apply mutatis mutandis.

1. Where a claimant has lodged a Statement for revocation [Rule 44] before the central division and the defendant or a licensee entitled to commence proceedings pursuant to Article 47 of the Agreement subsequently initiates an infringement action in a local or regional division against the claimant in respect of the same patent the following procedures shall apply.

2. The Registry at the local or regional division shall proceed in accordance with Rules 16 and 17. The Registry shall as soon as practicable notify the President of the Court of First Instance of the revocation action in the central division, the infringement action in the local or regional division and any Counterclaim for revocation in the infringement action. The presiding judges of the panels seized shall be informed likewise about actions in the other divisions.

3. Where a Counterclaim for revocation is brought in the infringement action and there is identity of parties as between the two actions, unless otherwise agreed by the parties, the panel appointed in the central division to hear the revocation action shall stay all further proceedings in the revocation action pending a decision of the panel hearing the action for infringement pursuant to Article 33(3) of the Agreement and Rule 37.

4. The panel hearing the action for infringement shall when exercising its discretion under Article 33(3) of the Agreement take into consideration how far the revocation action in the central division was advanced prior to the stay referred to in paragraph 3.

5. Where the panel hearing the action for infringement decides to proceed in accordance with Article 33(3)(a) of the Agreement, Rules 33 and 34 shall apply mutatis mutandis to the action for
infringement.

6. Where the panel hearing the action for infringement decides to proceed in accordance with Article 33(3)(b) or (c) of the Agreement, Rules 37.4 and 39 to 41 shall apply mutatis mutandis. 

1. Where a claimant has lodged an action for declaration of non-infringement (Rule 61) before the central division against the patent proprietor or a licensee entitled to commence infringement
proceedings pursuant to Article 47 of the Agreement and the defendant proprietor or licensee subsequently initiates an action for infringement in a local or regional division against the claimant in respect of the same patent and with respect to the same alleged infringement the following procedure shall apply. 

2. The Registry shall proceed in accordance with Rule 16 and 17. The Registry shall as soon as practicable notify the President of the Court of First Instance of the co-pending actions and the dates attributed to them. The presiding judges of the panels seized shall be informed likewise about the action in the other division.

3. If the date attributed by the Registry to the action for infringement pursuant to Rule 17.1(a) is within three months of the date attributed to the action for declaration of non-infringement the panel of the central division shall stay all further proceedings in the action for a declaration. If the date attributed to the action for infringement is outside the said three month period there shall be no stay but the presiding judges of the central division and the local or regional division concerned shall consult to agree on the future progress of proceedings including the possibility of a stay of one action pursuant to Rule 295(f).

An action for declaration of non-infringement may be lodged together with an action for revocation of the patent in question. Fees shall be paid in accordance with both Rules 46 and Rules 70 and 74.

1. The Application for appropriate compensation [Article 32(1)(h) of the Agreement] shall contain:

(a) particulars in accordance with Rule 13.1(a) to (d);

(b) information on the filing of the statement as referred to in Article 8(1) of Regulation (EU) No 1257/2012;

(c) the licence agreement referred to in Article 8(2) of Regulation (EU) No 1257/2012.

2. Rules 132, 133, 134, 135 and 137 to 140 apply mutatis mutandis to the procedure for appropriate compensation.

^{Relation with Agreement: Article 32(1)(h)}

1. Subject to paragraph 2, where an action is brought against a decision of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012 (hereinafter "decision of the Office"), proceedings before the Court of First Instance shall consist of: 

(a) a written procedure, which shall include a possibility for interlocutory review by the European Patent Office;

(b) an interim procedure, which may include an interim conference; and 

(c) an oral procedure which, at the request of the claimant or at the instance of the Court, may include an oral hearing.

2. This Rule and Rules 88 (save as expressly provided for in Rule 97.2), 89 and 91 to 96 shall not apply to an expedited action against a decision of the Office pursuant to Rule 97.

An action against a decision of the Office shall have suspensive effect. 

An action against a decision of the Office may be brought on grounds of:

(a) infringement of Regulation (EU) No 1257/2012 or of Regulation (EU) No 1260/2012 or of any rule of law relating to their application;

(b) infringement of any of the implementing rules of the European Patent Office for carrying out the tasks referred to in Article 9(1) of Regulation (EU) No 1257/2012;

(c) infringement of an essential procedural requirement;

(d) misuse of power.

1. The claimant shall lodge an Application at the Registry, in accordance with Article 7(2) of the Agreement and Annex II thereto, to annul or alter a decision of the Office in the language in which the patent was granted, within two months of service of the decision of the Office.

2. The Application to annul or alter a decision of the Office shall contain: 

(a) the names of the claimant and, where applicable, of the claimant’s representative;

(b) where the claimant is not the proprietor of or applicant for the European patent with unitary effect, an explanation and evidence that he is adversely affected by the decision of the Office and entitled to start proceedings [Article 47(7) of the Agreement];

(c) postal and electronic addresses for service on the claimant and the names and addresses of the persons authorised to accept service;

(d) a reference to the contested decision of the Office;

(e) where applicable, information about any prior or pending proceedings relating to the patent concerned before the Court, the European Patent Office or any other court or authority;

(f) an indication whether the action shall be heard by a single judge;

(g) the order or the remedy sought by the claimant;

(h) one or more grounds for annulling or altering the contested decision, in accordance with Rule 87;

(i) the facts, evidence and arguments relied on; and

(j) a list of the documents, including any witness statements, referred to in the Application together with any request that all or part of any such document need not be translated and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and 3 shall apply mutatis mutandis.

3. The claimant shall pay the fee for the action against a decision of the Office, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

4. Rule 8 shall not apply.

^{Relation with Agreement: Articles 32(1)(i), 33(9), 47(7), 48(7) and 49(6)}

1. The Registry shall, as soon as practicable after an Application to annul or alter a decision of the Office has been lodged, examine whether the requirements of Articles 47(7) and 49(6) of the Agreement and Rule 88.1, .2(a) to (d) and .3 have been complied with.

2. If the Registry considers that any of the requirements referred to in paragraph 1 has not been complied with, it shall invite the claimant to:

(a) correct the deficiencies noted, within 14 days from the date of service of such notification; and

(b) where applicable, pay the fee for the action against a decision of the Office, within said 14 days.

3. The Registry shall at the same time inform the claimant that if the claimant fails to correct the deficiencies or pay the fee within the time stated, a decision by default may be given in accordance with Rule 355.

4. If the claimant fails to correct the deficiencies noted or to pay the fee for the action against a decision of the Office, the Registry shall inform the President of the Court of First Instance who may reject the action as inadmissible by a decision by default. He may give the claimant an opportunity to be heard beforehand.

If the requirements referred to in Rule 89.1 have been complied with, the Registry shall as soon as practicable:

(a) record the date of receipt of the Application to annul or alter a decision of the Office and attribute an action number to the file;

(b) record the file in the register;

(c) inform the claimant of the action number of the file and the date of receipt; and

(d) forward the Application to the European Patent Office, with an indication that the Application is admissible. 

1. If the European Patent Office considers that the Application to annul or alter a decision of the Office is well founded, it shall within two months of the date of receipt of the Application:

(a) rectify the contested decision in accordance with the order or remedy sought by the claimant [Rule 88.2(g)]; and 

(b) inform the Court that the decision has been rectified. 

2. Where the Court is informed by the European Patent Office that the contested decision has been rectified, it shall inform the claimant that the action is closed. It may order full or partial reimbursement of the fee for the action against a decision of the Office, in accordance with Part 6. 

Where the action is not closed in accordance with Rule 91.2, the action shall, as soon as practicable after the expiry of the period referred to in Rule 91.1, be assigned to a panel of the central division or to a single judge if requested by the claimant [Rule 88.2(f)] in accordance with Rule 345.3. Rule 18 shall apply.

1. In the examination of the Application to annul or alter a decision of the Office, the judge-rapporteur may invite the claimant to lodge further written pleadings, within a time period to be specified.

2. Where appropriate, the judge-rapporteur may, after consulting the claimant, set a date and time for an interim conference.

3. Rule 35 shall apply mutatis mutandis.

The judge-rapporteur may, on his own initiative or on request by the President of the European Patent Office, invite the President of the European Patent Office to comment in writing on any question arising in the course of proceedings under this Section including any appeal by the claimant pursuant to Rule 220. The claimant shall be entitled to submit his observations on the President’s comments.

During the interim procedure, the judge-rapporteur shall invite the claimant to indicate whether he wishes that an oral hearing be convened. The judge-rapporteur may convene an oral hearing at his own instance.

1. Rules 110.3, 111, 115 and 118.6 shall apply to the oral hearing and to the decision of the Court.

2. If an oral hearing is not convened, the panel shall decide in accordance with Rule 117. 

1. The proprietor of a patent whose request for unitary effect has been rejected by the Office shall lodge an Application at the Registry in accordance with Article 7(2) of the Agreement and Annex II thereto, to reverse the decision of the Office, in the language in which the patent was granted, within three weeks of service of the decision of the European Patent Office.

2. The Application shall contain particulars in accordance with Rule 88.2(a), (c), (d) and (g) to (j) and the proprietor shall pay the fee for the action against the decision of the Office in accordance with Part 6. Rule 15.2 and Rule 89 shall apply mutatis mutandis. 

3. If the requirements referred to in paragraph 2 have been complied with, Rule 90 shall apply mutatis mutandis.

4. The Registry shall as soon as practicable forward the Application to the standing judge who may invite the President of the European Patent Office to comment on the Application, but shall in any event decide the Application within three weeks of the date of receipt of the Application.

5. A Statement of appeal by the proprietor of the patent or the President of the European Patent Office against the decisions of the standing judge pursuant to paragraph 4 may be lodged within three weeks of service of the said decision. The Statement of appeal shall contain the particulars previously lodged pursuant to paragraph 2 and also the reasons for setting aside the contested decision. The appellant shall pay the fee for the appeal in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis. If the requirements of this paragraph 5 have been complied with, the Registry shall record the appeal in accordance with Rule 230.1 and shall as soon as practicable assign the appeal to the standing judge of the Court of Appeal [Rule 345.5 and 345.8] who may invite the other party to comment on the appeal but shall in any event decide the appeal within three weeks of receipt by the Registry of the Statement of appeal.

6. The Registry shall as soon as practicable notify the Office of the decision on the Application or on the appeal as the case may be.

The parties shall bear their own costs in any action pursuant to Rule 85 or 97.

1. During the interim procedure, the judge-rapporteur shall make all necessary preparations for the oral hearing. He may in particular, where appropriate, and subject to the mandate of the panel, hold an interim conference with the parties which may be held on more than one occasion and may exercise the powers provided for in Rule 334.

2. The judge-rapporteur shall have the obligation to ensure a fair, orderly and efficient interim procedure.

3. Without prejudice to the principle of proportionality, the judge-rapporteur shall complete the interim procedure within three months of the closure of the written procedure. 

^{Relation with Agreement: Articles 43 and 52(2)}

1. The judge-rapporteur may refer any matter to the panel for decision and the panel may of its own motion review any decision or order of the judge-rapporteur or the conduct of the interim procedure.

2. Any party may request that a decision or order of the judge-rapporteur be referred to the panel for a review pursuant to Rule 333. Pending review, the decision or order of the judge-rapporteur shall be effective.

1. Whether or not the judge-rapporteur decides to hold an interim conference, he may order the parties, within time periods to be specified, in particular to:

(a) provide further clarification on specific points;

(b) answer specific questions;

(c) produce evidence;

(d) lodge specific documents including each party’s summary of the orders to be sought at the interim conference. 

The judge-rapporteur shall at the same time inform the party concerned that if the party fails to comply with the order within the time period specified, a decision by default may be given in accordance with Rule 355.

2. If a party fails to comply with an order of the judge-rapporteur within the time period specified, the judge-rapporteur may give a decision by default pursuant to Rule 355.

The interim conference shall enable the judge-rapporteur to: 

(a) identify main issues and determine which relevant facts are in dispute; 

(b) where appropriate, clarify the position of the parties as regards those issues and facts;

(c) establish a schedule for the further progress of the proceedings;

(d) explore with the parties the possibilities to settle the dispute or to make use of the facilities of the Centre;

(e) where appropriate, issue orders regarding production of further pleadings, documents, experts (including court experts), experiments, inspections, further written evidence, the matters to be the subject of oral evidence and the scope of questions to be put to the witnesses;

(f) where appropriate, but only in the presence of the parties, hold preparatory discussions with witnesses and experts with a view to properly preparing for the oral hearing;

(g) make any other decision or order as he deems necessary for the preparation of the oral hearing including, after consultation with the presiding judge, an order for a separate hearing of witnesses and experts before the panel;

(h) set a date for any separate hearing pursuant to point (g) of this Rule, confirm the date for the oral hearing and order, where appropriate, after consultation with the presiding judge and the parties that the oral hearing or a separate hearing of witnesses and experts be wholly or partly by video conference in accordance with Rule 112.3;

(i) decide the value of the action in accordance with Rule 370.6.;

(j) decide the value of the proceeding for the purpose of applying the scale of ceilings for recoverable costs (Rule 152.3);

(k) order the parties to submit, in advance of the decision at the oral hearing, a preliminary estimate of the legal costs that they will seek to recover.

^{Relation with Agreement: Article 52(2)}

1. The interim conference should, where practicable, be held by telephone conference or by video conference.

2. On request by a party, subject to paragraph 1 and the approval of the judge-rapporteur, the interim conference may be held in Court. If the interim conference is held in Court, it shall be open to the public unless the Court decides to make it, to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interests of justice or public order.

3. The judge-rapporteur may hold the interim conference in any language agreed by the parties’ representatives.

4. Rule 103 shall apply mutatis mutandis.

5. Following the interim conference, the judge-rapporteur shall issue an order setting out the decisions taken.

The interim conference shall be audio recorded. The recording shall be made available at the premises of the Court to the parties or their representatives after the hearing.

^{Relation with Agreement: Articles 44 and 45}

The judge-rapporteur shall summon the parties to the oral hearing which shall take place before the panel on the date(s) set under Rules 28 and/or 41(c) and 104(h). If no date(s) have been set the judgerapporteur shall set a date for the oral hearing. At least two months’ notice shall be given, unless the parties agree to a shorter time period.

1. At the latest one month before the oral hearing including any separate hearing of witnesses and experts a party may lodge a Request for simultaneous interpretation which shall contain:

(a) an indication of the language to or from which the party requests simultaneous interpretation during the oral hearing;

(b) the reasons for the Request;

(c) the field of technology concerned;

(d) any other information of relevance for the Request.

2. The judge-rapporteur shall decide whether and to what extent simultaneous interpretation is appropriate and shall instruct the Registry to make all necessary arrangements for simultaneous
interpretation. In the event that the judge-rapporteur refuses to order simultaneous interpretation the parties may request arrangements to be made, so far as practically possible, for simultaneous interpretation at their cost.

3. The judge-rapporteur may decide of his own motion to order simultaneous interpretation and shall instruct the Registry and inform the parties accordingly.

4. A party wishing to engage an interpreter at its own expense shall inform the Registry at the latest two weeks before the oral hearing.

5. Costs for simultaneous interpretation are costs of the proceedings to be decided upon under Rule 150 except where a party engages an interpreter at its own expense under paragraph 4; these costs are borne solely by that party.

^{Relation with Agreement: Article 51(2)}

1. As soon as the judge-rapporteur considers that the state of preparation of the file is adequate, he shall inform the presiding judge and the parties that the interim procedure is closed in view of the oral hearing. 

2. Where final dates have been set pursuant to Rules 103 and 104 the interim procedure shall be deemed closed on the last date set.

3. The oral procedure shall start immediately after the interim procedure is closed. The presiding judge shall, in consultation with the judge-rapporteur, take over the management of the action.

The presiding judge shall:

(a) have all authority to ensure a fair, orderly and efficient oral procedure; and

(b) ensure that the action is ready for decision on the merits at the end of the oral hearing.

1. The oral hearing shall be held before the panel and shall be under the control of the presiding judge.

2. The oral hearing shall consist of:

(a) the hearing of the parties’ oral submissions;

(b) the hearing of witnesses and experts under the control of the presiding judge.

3. The Court may decide to:

(a) allow a party, representative or accompanying person, to attend the oral hearing by videoconference,

(b) hear a party, witnesses or expert through electronic means, such as video conference or

(c) hold the oral hearing by videoconference if all parties agree or the Court considers it appropriate to do so due to exceptional circumstances. In all cases, the oral hearing shall be transmitted simultaneously in picture and sound to the court room.

4. The presiding judge and the judges of the panel may provide a preliminary introduction to the action and put questions to the parties, to the parties’ representatives and to any witness or expert.

5. Under the control of the presiding judge, the parties may put questions to the witness or expert. The presiding judge may prohibit any question which is not designed to adduce admissible evidence.

6. With the consent of the Court a witness may give evidence in a language other than the language of proceedings. 

^{Relation with Agreement: Articles 52(3) and 53(1)}

1. Without prejudice to the application of the principle of proportionality, the presiding judge shall endeavour to complete the oral hearing within one day. The presiding judge may set time limits for parties’ oral submissions in advance of the oral hearing.

2. Oral testimony at the oral hearing or at any separate hearing shall be limited to issues identified by the judge-rapporteur or the presiding judge as having to be decided on the basis of oral evidence.

3. The presiding judge may, after consulting the panel, limit a party’s oral submissions if the panel is sufficiently informed.

In exceptional cases, the Court may, after hearing the parties’ oral submissions, decide to adjourn proceedings and call for further evidence.

The oral hearing and any separate hearing of witnesses shall be open to the public unless the Court decides to make a hearing, to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interests of justice or public order. The hearing shall be audio recorded. The recording shall be made available to the parties or their representatives at the premises of the Court after the hearing. Rule 103 shall apply mutatis mutandis.

^{Relation with Agreement: Article 45}

1. A party which does not wish to be represented at the oral hearing shall inform the Registry in good time. Where both parties have informed the Registry that they do not wish to be represented at the oral hearing, the Court may decide the action in accordance with Rule 117.

2. The Court shall not be obliged to delay any step in the procedure, including the decision on the merits, by reason only of the absence of a party from the oral hearing.

3. A party that is not represented at the oral hearing shall be treated as relying only on its written case. 

4. If due to an exceptional occurrence a party is prevented from being represented at the oral hearing, the Court shall on a reasoned request of that party, adjourn the oral hearing.

5. The provisions of this Rule are without prejudice to the power of the Court to give a decision by default pursuant to Rule 355.

Where both parties have informed the Registry that they do not wish to be represented at the oral hearing the Court shall take a decision on the merits on the basis of the pleadings and evidence submitted by the parties and the court expert, if applicable, and otherwise in accordance with Rules 118 and 350 to 354. 

1. In addition to the orders and measures and without prejudice to the discretion of the Court referred to in Articles 63, 64, 67 and 80 of the Agreement the Court may, if requested, order the payment of damages or compensation according to Articles 68 and 32(1)(f) of the Agreement. The amount of the damages or the compensation may be stated in the order or determined in separate proceedings [Rules 125-144].

2. If, while there are infringement proceedings before a local or regional division, a revocation action is pending between the same parties before the central division or an opposition is pending before the European Patent Office, the local or regional division:

(a) may render its decision on the merits of the infringement claim, including its orders, under the condition subsequent pursuant to Article 56(1) of the Agreement that the patent is not held to be wholly or partially invalid by the final decision in the revocation proceedings or a final decision of the European Patent Office or under any other term or condition; or

(b) may stay the infringement proceedings pending a decision in the revocation procedure or a decision of the European Patent Office and shall stay the infringement proceedings if it is of the view that there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision in the revocation proceedings or of the European Patent Office where such decision of the European Patent Office may be expected to be given rapidly.

3. Where, in the decision on the merits of a revocation action, the patent is found to be entirely or partially invalid, the Court shall revoke the patent entirely or partially according to Article 65 of the Agreement.

4. Where the Court has made orders in accordance with paragraph 2(a) any party may apply to the local or regional division within two months following a final decision of the central division or the Court of Appeal or the European Patent Office as the case may be on the validity of the patent for orders consequential on such final decision [Rule 354.2].

5. The Court shall decide in principle on the obligation to bear legal costs in accordance with Article 69 of the Agreement. The Court may order in advance of the decision that the parties submit a preliminary estimate of the legal costs that they will seek to recover.

6. The Court shall give the decision on the merits as soon as possible after the closure of the oral hearing. The Court shall endeavour to issue the decision on the merits in writing within six weeks of the oral hearing. The Court shall give reasons for its decision.

7. The Court may give its decision immediately after the closure of the oral hearing and provide its reasons on a subsequent date.

8. The orders of the Court referred to in paragraphs 1 and 2(a) shall be enforceable on the defendant only after the claimant has notified the Court which part of the orders he intends to enforce, a certified translation of the orders in accordance with Rule 7.2, where applicable, into the official language of a Contracting Member State in which the enforcement shall take place has been provided by the claimant and the said notice and, where applicable, a certified translation of the orders have been served on the defendant by the Registry. The Court may subject any order or measure to a security to be given by the successful party to the unsuccessful party as determined by the Court in accordance with Rule 352.

^{Relation with Agreement: Article 77}

Commentary

Rule 118.5

In UPC_CFI_249/2023 (Meril GmbH v. Edwards Lifesciences Corporation, order of 19 December 2023, the Local Division Munich found that Rule 118.5 RoP (Decision on the principle of costs) shall apply mutatis mutandis to applications for provisional measures; and that a decision on the principle of costs under Rule 118.5 RoP may be followed by cost determination proceedings pursuant to Rule 151 RoP.

Rule 118.8

In UPC_CFI_2/2023 (10xGenomics v. NanoString Technologies et al), the Local Division in Munich emphasized the immediate enforceability of preliminary injunction orders without the need for additional court enforcement orders under Art. 82.4 UPCA. Rule 118.8 of the Rules of Procedure, according to its clear wording does not apply to orders under Art. 62 UPCA. 

The Court may order an interim award of damages to the successful party in the decision on the merits, subject to any conditions that the Court may order. Such award shall at least cover the expected costs of the procedure for the award of damages and compensation on the part of the successful party.

The determination of the amount of damages ordered for the successful party may be the subject of separate proceedings. The determination shall include the determination of the amount of compensation, if any, to be awarded as a result of the provisional protection conferred by a published European patent application [Article 32(1)(f) of the Agreement, Article 67 EPC] and compensation to be paid pursuant to Rules 118.1, 198.2, 213.2 and 354.2. The expression “damages” used in Chapter 4 shall be deemed to include such compensation and interest at the rate and for the period that the Court shall decide.

Where the successful party wishes to have the amount of damages determined, it shall no later than one year from service of the final decision on the merits (including any final decision on appeal) on both infringement and validity (or in the case of an award under Rules 118.1, 198.2, 213.2 or 354.2 from the date of the order for such award) lodge an Application for the determination of damages, which may include a request for an order to lay open books.

^{Relation with Agreement: Article 68}

1. The Application for the determination of damages shall contain:

(a) particulars in accordance with Rule 13.1(a) to (d);

(b) the date of the decision on the merits and the action number of the file;

(c) if required a request for an order to lay open books (Rules 141 to 144) in which case the applicant shall provide the matters set out in Rule 141(b) to (e).

2. After any procedure for the laying open of books is complete, or, if that has not been requested in the Application referred to in paragraph 1 the applicant shall indicate:

(a) the redress (damages, licence fees, profits) and the interest thereon requested by him;

(b) an indication of the facts relied on, in particular calculations concerning lost profits or profits made by the unsuccessful party;

(c) the evidence relied on;

(d) a statement as to whether the decision on the merits is the subject of an appeal;

(e) his assessment of the amount of damages due to him.

The applicant shall pay the fixed fee and, where applicable, the value based fee for the determination of damages in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

Where the value of the action exceeds EUR500.000 the applicant shall pay a value based fee for the determination of damages in accordance with Part 6.

1. The Registry shall, as soon as practicable after the lodging of the Application for the determination of damages, examine whether the requirements of Rules 126, 131.1 and .2(d) and (e) and 132 have been complied with.

2. If the Application for the determination of damages does not comply with the requirements referred to in paragraph 1, the Registry shall invite the applicant to correct the deficiencies noted within a time period to be specified.

3. Rule 16.4 to .5 shall apply mutatis mutandis

1. If the requirements referred to in Rule 131.1 and .2(d) and (e) have been complied with, the Registry shall as soon as practicable:

(a) record the date of receipt of the Application for the determination of damages;

(b) record the Application in the register;

(c) inform the applicant of the date of receipt;

(d) inform the panel which has given the decision on the merits on infringement that an Application for the determination of damages has been lodged;

(e) serve the Application upon the unsuccessful party.

2. The panel which has given the decision on the merits on infringement shall be the panel for the determination of damages unless for any reason this is not possible or practical in which case the presiding judge of the division concerned shall appoint a fresh panel. Rules 17.2 and 18 shall apply mutatis mutandis.

The Court may stay the Application for a determination of damages pending any appeal on the merits pursuant to Rule 295(h) on a reasoned request by the unsuccessful party. The applicant shall be given the opportunity to be heard. If the Court continues the proceedings on the Application, it may order the applicant to render a security according to Rule 352.

1. If the unsuccessful party accepts the claim made in the Application for the determination of damages, it shall within two months inform the Registry. The judge-rapporteur shall make the order for the determination of damages in accordance with the Application for the determination of damages. 

2. If the unsuccessful party contests the claim made in the Application for the determination of damages, it shall within two months of service of the Application for the determination of damages or, where there was a procedure for the laying open of books, within two months of service of the indication pursuant to Rule 131.2, lodge a Defence to the Application for the determination of damages.

The Defence to the Application for the determination of damages shall contain:

(a) the names of the unsuccessful party and of that party’s representative;

(b) postal and electronic addresses for service on the unsuccessful party and the names and addresses of the persons authorised to accept service;

(c) the action number attributed to the file;

(d) the reasons why the Application for the award of damages is contested;

(e) an indication of the facts relied on; and

(f) the evidence relied on.

The applicant may within one month lodge a Reply to the Defence to the Application for the determination of damages, limited to the matters raised in the Defence. The unsuccessful party may
lodge a Rejoinder to the Reply within one month of service of the Reply, limited to the matters raised in the Reply.

1. The judge-rapporteur may order further exchange of written pleadings, within time periods to be specified.

2. The provisions of Part 1, Chapters 2 (Interim procedure) and 3 (Oral procedure) shall apply mutatis mutandis but with such reduced timetable as the judge-rapporteur may order. He shall decide on the obligation to bear the legal costs of the proceedings for the determination of damages in accordance with Article 69 of the Agreement. 

If the applicant has made a request pursuant to Rule 131.1(c), Rules 134 to 136 shall apply mutatis mutandis. The Request shall contain:

(a) particulars in accordance with Rule 131.1(a) and (b);

(b) details of any information ordered by the Court and given by the other party pursuant to Rule 191;

(c) a description of the information held by the unsuccessful party to which the applicant requests access, in particular documents relating to turnover and profits generated by the infringing products or regarding the extent of use of the infringing process as well as accounts and bank documents, and any related document concerning the infringement;

(d) the reasons why the applicant needs access to this information;

(e) the facts relied on; and

(f) the evidence offered in support.

1. If the unsuccessful party accepts the Request to lay open books, it shall within two months of service of the Request to lay open books inform the Registry. The judge-rapporteur shall make the order to lay open books in accordance with the Request to lay open books.

2. If the unsuccessful party contests the Request to lay open books, it shall within two months of service of the Request to lay open books lodge a Defence to the Request to lay open books.

3. The applicant may within 14 days of service of the Defence to the Request lodge a Reply to the Defence to the Request to lay open books, limited to the matters raised in the Defence. The unsuccessful party may within 14 days of service of the Reply lodge a Rejoinder, limited to the matters raised in the Reply.

Rule 140 shall apply mutatis mutandis.

1. The Court may:

(a) order the unsuccessful party to open its books to the applicant within a time period to be specified and subject to such terms as the Court may deem appropriate having regard inter alia to Article 58 of the Agreement and Rule 190.1 and .4;

(b) inform the applicant and specify a time period within which the procedure for the award of damages shall be continued.

2. Where the Request to lay open books is not allowable, the Court shall inform the applicant and specify a time period within which the procedure for the award of damages shall be continued [Rule 131.2].

1. A cost decision may be the subject of separate proceedings following a decision on the merits and, if applicable, a decision for the determination of damages. The cost decision shall cover costs incurred in the proceedings by the Court such as costs for simultaneous interpretation and costs incurred pursuant to Rules 173, 180.1, 185.7, 188 and 201 and, subject to the Rules 152 to 156, the costs of the successful party including Court fees paid by that party [Rule 151(d)]. Costs for interpretation and translation which is necessary for the judges of the Court in order to conduct the case in the language of proceedings are borne solely by the Court.

2. The Court may order an interim award of costs to the successful party in the decision on the merits [Rule 119] or in a decision for the determination of damages, subject to any conditions that the Court may decide.

Where the successful party (hereinafter "the applicant") wishes to seek a cost decision, it shall within one month of service of the decision lodge an Application for a cost decision which shall contain:

(a) particulars in accordance with Rule 13.1(a) to (d);

(b) the date of the decision and the action number of the file;

(c) a statement as to whether the decision on the merits is the subject of an appeal, if known at the date of the Application;

(d) an indication of the costs for which compensation is requested, which may include recovery of court fees and costs of representation, of witnesses, of experts, and other expenses; and

(e) the preliminary estimate of the legal costs that the party submitted pursuant to Rule 118.5.

Commentary

In UPC_CFI_249/2023 (Meril GmbH v. Edwards Lifesciences Corporation, order of 19 December 2023, the Local Division Munich found that a decision on the principle of costs under Rule 118.5 RoP may be followed by cost determination proceedings pursuant to Rule 151 RoP.

1. The applicant shall be entitled to recover reasonable and proportionate costs for representation.

2. The Administrative Committee shall adopt a scale of ceilings for recoverable costs by reference to the value of the proceedings. The scale may be adjusted from time to time.

3. Where a claim, counterclaim, application, request or appeal subject to only a fixed fee is made, the party concerned shall, in the first submission, assess its respective value for the purpose of calculating the applicable ceiling. The other party shall be heard. Rule 370.6 shall apply mutatis mutandis. 

Commentary

According to UPC_CFI_16/2024, UPC_CFI_121/2025 andUPC_CFI_124/2025 (Ortovox Sportartikel GmbH v. Mammut Sports , LD Düsseldorf of 22 April 2025)  infringement analyses to prepare main proceedings, secretarial work as well as the drafting of a warning letter, an application for interim measures or a statement of claim are costs to be considered as reimbursable.

Even if the settlement of the costs of provisional, resp. interim proceedings is usually reserved for a uniform cost assessment procedure following the main proceedings, the costs incurred in the provisional proceedings are separately reimbursable. The upper limits of the recoverable costs for the proceedings for provisional measures and for the main proceedings must therefore be determined separately. Further, the upper limits also apply for both the first instance and for the second instance separately.

The compensation for costs of experts of the parties [Rule 181] exceeding the expenses referred to in Rule 180.1 shall be based on the rates that are customary in the respective sector, with due regard to the required expertise, the complexity of the issue and the time spent by the expert for the services rendered.

Where the Court has ordered the deposit of a sum sufficient to cover the expenses of a witness in accordance with Rule 180.2 or of a party’s expert in accordance with Rule 181, compensation may be requested for payments made by the Registry towards the expenses incurred by a witness or an expert. 

1. The compensation for costs of interpreters shall be the rates that are customary in the country of the division in question, depending on the interpreter’s training and professional experience. 

2. The compensation for costs of translators shall be the rates that are customary in the country of the division in question, depending on the translator’s training and professional experience. 

1. The judge-rapporteur may request the applicant to provide written evidence of all costs requested in Rule 151(d). The judge-rapporteur shall allow the unsuccessful party an opportunity to comment in writing on the costs requested including any item of costs that should be apportioned or borne by each party in accordance with Article 69(1) to (3) of the Agreement.

2. The judge-rapporteur shall decide in writing on the costs to be awarded or apportioned in accordance with Article 69(1) to (3) of the Agreement.

3. The costs shall be paid within the period ordered by the judge-rapporteur.

The decision of the judge-rapporteur as to costs only may be appealed to the Court of Appeal in accordance with Rule 221.

^{Relation with Agreement: Article 69}

1. At any time during proceedings, following a reasoned request by one party, the Court may order the other party to provide, within a specified time period, adequate security for the legal costs and other expenses incurred and/or to be incurred by the requesting party, which the other party may be liable to bear. Where the Court decides to order such security, it shall decide whether it is appropriate to order the security by deposit or bank guarantee.

2. The Court shall give the parties an opportunity to be heard before making an order for security. Rule 354 shall apply to the enforcement of the order.

3. The order for security shall indicate that an appeal may be lodged in accordance with Article 73 of the Agreement and Rule 220.2.

4. The Court shall, when specifying the time period in paragraph 1, inform the party concerned that if the party fails to provide adequate security within the time stated, a decision by default may be given, in accordance with Rule 355.

5. If a party fails to provide adequate security within the time stated, the Court may give a decision by default pursuant to Rule 355.

^{Relation with the Agreement: Article 69(4)}

Except where deposits are rendered pursuant to Rule 180.2, the Court may order that either or both parties provide adequate security (either by deposit or bank guarantee) to cover costs incurred and/or to be incurred in the proceedings by the Court, pending a cost decision pursuant to Rule 150.1. Rule 158.2 and .3 shall apply.

1. In proceedings before the Court, the means of evidence shall include in particular the following:

(a) written evidence, whether printed, hand-written or drawn, in particular documents, written witness statements, plans, drawings, photographs;

(b) expert reports and reports on experiments carried out for the purpose of the proceedings;

(c) physical objects, in particular devices, products, embodiments, exhibits, models;

(d) electronic files and audio/video recordings.

2. Means of obtaining evidence shall include in particular the following:

(a) hearing of the parties;

(b) requests for information;

(c) production of documents;

(d) summoning, hearing and questioning of witnesses;

(e) appointing, receiving opinions from, summoning and hearing and questioning of experts;

(f) ordering inspection of a place or a physical object;

(g) conducting comparative tests and experiments;

(h) sworn statements in writing (written witness statements).

3. Means of obtaining evidence shall further include [Article 59 and 60 of the Agreement]:

(a) ordering a party or a third party to produce evidence;

(b) ordering measures to preserve evidence.

1. A party making a statement of fact that is contested or likely to be contested by the other party shall indicate the means of evidence to prove it. In case of failure to indicate the means of evidence regarding a contested fact, the Court shall take such failure into account when deciding the issue in question.

2. A statement of fact that is not specifically contested by any party shall be held to be true as between the parties.

Commentary

In the Decision of the Court of Appeal UPC_CoA_402/2024 (Decision of The CoA of 19 June 2025 re: Alexion v. Samsung Bioepsis) it is stated that where a statement of fact is not specifically contested by any party, it follows from R. 171.2 RoP that it shall be held to be true as between the parties. However, even if there is such an uncontested fact, this does not imply that the legal consequence for which this fact was submitted automatically follows. It still falls upon the Court to decide whether the facts advanced justify such a legal consequence (Court of Appeal, Kodak v Fujifilm, 17 April 2025, UPC_CoA_312/2025, par. 12).

Pleading ignorance

In UPC_CFI_505/2024 – Decision of 13 May 2025, the Düsseldorf Local Division rejected the Defendants’ repeated reliance on “pleading ignorance” (in German civil procedure called: Bestreiten mit Nichtwissen), e.g. when contesting the standing of Claimant 1) as an exclusive licensee. The Düsseldorf Local Division held that such general denials did not fulfil the requirements of Rule 171.2 RoP, which states that facts which are not specifically contested shall be treated as admitted. This marks a clear divergence from German civil procedural law (Zivilprozessordnung – ZPO), where § 138(4) ZPO permits a party to declare lack of knowledge with respect to an allegation if the party has made reasonable efforts to obtain the necessary information and cannot, without its own fault, confirm or deny the fact. German courts typically accept such declarations if the relevant fact lies in the exclusive knowledge of the other party. 

1. Evidence available to a party regarding a statement of fact that is contested or likely to be contested by the other party must be produced by the party making that statement of fact.

2. The Court may at any time during the proceedings order a party making a statement of fact to produce evidence that lies in the control of that party. If the party fails to produce the evidence, the Court shall take such failure into account when deciding on the issue in question. 

^{Relation with Agreement: Article 53}

For the judicial cooperation in the taking of evidence, the Court shall apply any method provided by:

1. The Regulation (EU) No 2020/1783, where it applies;

2. The Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters, where it applies, or any other applicable convention or agreement; or

3. to the extent that there is no such convention or agreement in force, national law on the procedures to be followed for the judicial cooperation in the taking of evidence.

1. A party seeking to offer witness evidence shall lodge a written witness statement or a written summary of the evidence to be given.

2. A written witness statement shall be signed by the witness and shall include a statement of the witness that he is aware of his obligation to tell the truth and of his liability under applicable national law in the event of any breach of this obligation. The statement shall set out the language in which the witness shall give oral evidence, if necessary.

3. The written witness statement or written summary of the evidence to be given shall set out:

(a) any current or past relationship between the witness and the party offering the evidence; and

(b) any actual or potential conflict of interest that may affect the impartiality of the witness.

Subject to the orders of the Court referred to in Rules 104(e) and 112.2(b) a party seeking to offer oral witness evidence shall make an Application for the hearing of a witness in person which shall set out: 

(a) the reasons why the witness should be heard in person;

(b) the facts which the party expects the witness to confirm; and

(c) the language in which the witness shall give evidence.

1. The Court may order that a witness be heard in person:

(a) of its own motion;

(b) where a written witness statement is challenged by the other party; or

(c) on an Application for the hearing of a witness in person [Rule 176].

2. An order of the Court summoning a witness to the oral hearing shall in particular indicate:

(a) the name, address and description of the witness;

(b) the date and place of the oral hearing;

(c) an indication of the facts of the action about which the witness is to be examined;

(d) information about the reimbursement of expenses incurred by the witness;

(e) a statement that the witness will be questioned by the Court and the parties; and

(f) the language of the proceedings and the possibility of arranging simultaneous interpretation between that language and the language of the witness, if necessary [Rule 109].

3. In its order summoning the witness, the Court shall also inform the witness of his duties and rights as a witness under Rules 178 and 179, including the sanctions which may be imposed on a defaulting witness.

1. After the identity of the witness has been established and before hearing his evidence, the presiding judge shall ask the witness to make the following declaration: 

"I solemnly, sincerely and truly declare and affirm that the evidence I shall give shall be the truth, the whole truth and nothing but the truth."

2. The witness shall give his evidence to the Court.

3. The hearing of a witness who has signed a written witness statement shall begin with the confirmation of the evidence given therein. The witness may elaborate on the evidence contained in his written witness statement.

4. The presiding judge and the judges of the panel may put questions to the witness. 

5. Under the control of the presiding judge, the parties may put questions to the witness. The presiding judge may prohibit any question which is not designed to adduce admissible evidence.

6. With the consent of the Court a witness may give evidence in a language other than the language of proceedings.

1. Witnesses who have been duly summoned shall obey the summons and attend the oral hearing.

2. Without prejudice to paragraph 3, if a witness who has been duly summoned fails to appear before the Court or refuses to give evidence or to make the declaration referred to in Rule 178.1, the Court may impose upon him a pecuniary sanction not exceeding EUR50.000 and may order that a further summons be served at the witness’s own expense.

3. Nobody shall be obliged to sign a written witness statement or to give evidence at an oral hearing if he is a spouse, partner equal to a spouse under applicable national law, descendant, sibling or parent of a party. A witness may also refuse to answer questions if answering them would violate a professional privilege or other duty of confidentiality imposed by the national law applicable to the witness or expose him or his spouse, partner equal to a spouse under applicable national law, descendant, sibling or parent to criminal prosecution under applicable national law.

4. The Court may decide to report to the competent authorities of the Contracting Member States whose courts have criminal jurisdiction in case of the giving of false evidence on the part of a witness.

1. A witness shall be entitled to reimbursement of:

(a) expenses for travelling and stay; and

(b) loss of income caused by his hearing in person. 

After the witness has carried out his duties and upon his request, the Registry shall make a payment to the witness towards the expenses incurred.

2. The Court shall make the summoning of a witness conditional upon the deposit by the party relying on the witness of a sum sufficient to cover the expenses referred to in paragraph 1. 

1. Subject to the orders of the Court referred to in Rules 104(e) and 112.2(b) a party may provide any expert evidence that it considers necessary. Rules 175 to 180 shall apply mutatis mutandis to experts of the parties.

2. An order of the Court under Rule 177 summoning the expert shall additionally set out that: 

(a) an expert has a duty to assist the Court impartially on matters relevant to his area of expertise which overrides any duty to the party retaining him; and

(b) an expert is to be independent and objective, and shall not act as an advocate for any party to the proceedings.

1. Where the Court must resolve a specific technical or other question in relation to the action, it may of its own motion, and after hearing the parties, appoint a court expert.

2. The parties may make suggestions regarding the identity of the court expert, his technical or other relevant background and the questions to be put to him.

3. The court expert shall be responsible to the Court and shall possess the expertise, independence and impartiality required for being appointed as court expert. The parties shall be entitled to be heard on the expertise, independence and impartiality of the court expert.

4. The Court shall appoint a court expert by way of order which shall in particular specify:

(a) the name and address of the expert appointed;

(b) a short description of the facts of the action;

(c) the evidence submitted by the parties in respect of the technical or other question;

(d) the questions put to the expert, with the appropriate level of detail, including where appropriate suggestions relating to any experiments to be carried out;

(e) when and under what conditions the expert may receive other relevant information;

(f) the time period for the presentation of the expert report;

(g) information about the reimbursement of expenses incurred by the expert;

(h) information about the sanctions which may be imposed on a defaulting expert; and

(i) his duties under Rule 186.

5. The expert shall receive a copy of the order, together with the documents and other evidence that the Court considers to be necessary for carrying out his task.

6. The expert shall be required upon receipt of the order to confirm in writing that he will present the expert report within the time period specified by the Court.

7. The Court shall agree with the expert on a fee covering his written expert report and his participation in the oral hearing. The Court may reduce this fee by an equitable amount if the expert does not deliver his report within the time period specified by the Court or if the report did not have the quality to be expected of the expert.

8. If an appointed court expert does not present his report within the time period specified or, if extended at the expert’s request, the extended period, the Court may appoint another expert in his place. The Court may hold the expert liable for all or part of the costs of appointing and reimbursing another expert.

9. The Registry shall maintain an indicative list of technical experts. 

1. The court expert shall present an expert report in writing within the time period specified by the Court [Rule 185.4(f)].

2. The court expert shall be under the supervision of the Court and shall inform the Court of his progress in carrying out his task.

3. The court expert shall give expert advice only on questions which have been put to him.

4. The court expert shall not communicate with one party without the other party being present or without the consent of the other party. He shall document all communications with the parties in his report.

5. The court expert shall not communicate the contents of his report to third parties. 

6. The court expert shall attend the oral hearing if requested to do so by the Court and shall answer questions from the Court and the parties.

7. The court expert has an overriding duty to assist the Court impartially on matters relevant to his area of expertise. He is to be independent and objective, and shall not act as an advocate for any party to the proceedings.

Once the report of the court expert has been presented to the Court, the Court shall invite the parties to comment on it either in writing or during the oral hearing.

Rules 178 to 180 shall apply mutatis mutandis to a court expert.

^{Relation with Agreement: Article 57}

1. Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substantiating those claims, specified evidence which lies in the control of the other party or a third party, the Court may on a reasoned request by the party specifying such evidence, order that other party or third party to produce such evidence. For the protection of confidential information the Court may order that the evidence be disclosed to certain named persons only and be subject to appropriate terms of non-disclosure.

2. During the written and interim procedures, a party may request such an order to produce evidence.

3. The judge-rapporteur may make such order in the written procedure or in the interim procedure having given the other/third party an opportunity to be heard.

4. An order to produce evidence shall in particular specify:

(a) under which conditions, in what form and within what time period the evidence shall be produced;

(b) any sanction which may be imposed if the evidence is not produced according to the order.

5. Where the Court orders a third party to produce evidence, the interests of that third party shall be duly taken into account.

6. An order to produce evidence shall be subject to the provisions of Rules 179.3, 287 and 288. The order shall indicate that an appeal may be brought in accordance with Article 73 of the Agreement and Rule 220.1.

7. If a party fails to comply with an order to produce evidence, the Court shall take such failure into account when deciding on the issue in question.

^{Relation with Agreement: Article 59}

The Court may in response to a reasoned request by a party order the other party or any third party to communicate such information in the control of that other party or third party as is specified in Article 67 of the Agreement or such other information as is reasonably necessary for the purpose of advancing that party’s case. Rule 190.1 second sentence, .5 and .6 shall apply mutatis mutandis.

^{Relation with the Agreement: Article 67}

1. An Application for preserving evidence may be lodged by a party (within the meaning of Article 47 of the Agreement) (hereinafter "the applicant") at the division where the applicant has commenced infringement proceedings on the merits. If the application is lodged before proceedings on the merits have been started it shall be lodged at the division where the applicant intends to start proceedings on the merits.

2. The Application for preserving evidence shall contain:

(a) particulars in accordance with Rule 13.1(a) to (i);

(b) a clear indication of the measures requested [Rule 196.1], including the exact location of the evidence to be preserved where it is known or suspected with good reason;

(c) the reasons why the proposed measures are needed to preserve relevant evidence; and

(d) the facts and evidence relied on in support of the Application.

Where main proceedings on the merits of the case have not yet been started before the Court, the Application shall in addition contain a concise description of the action which will be started before the Court, including an indication of the facts and evidence which may be relied on in support.

3. Where the applicant requests that measures to preserve evidence be ordered without hearing the other party (hereinafter "the defendant"), the Application for preserving evidence shall in addition set out the reasons for not hearing the defendant having regard in particular to Rule 197. The applicant shall be under a duty to disclose any material fact known to it which might influence the Court in deciding whether to make an order without hearing the defendant. The application shall not be entered on the register until notice has been given to the defendant pursuant to Rule 197.2.

4. Where the Application for preserving evidence is lodged after main proceedings on the merits of the case have been started before the Court, the Application shall be drawn up in the language of the proceedings. Where the Application is lodged before main proceedings on the merits of the case have been started before the Court, Rule 14 shall apply mutatis mutandis.

5. The applicant shall pay the fee for the Application for preserving evidence, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

^{Relation with Agreement: Article 60}

1. Where main proceedings on the merits of the case have not yet been started before the Court, the Application for preserving evidence shall be dealt with in accordance with Rule 16 (formalities examination by Registry), Rule 17.1(a) to (c) and .2 (date of receipt, recording in the register, action number, assignment to panel) and Rule 18 (designation only of judge-rapporteur by presiding judge). 

2. Where main proceedings on the merits of the case have already been started before the Court, an Application for preserving evidence shall immediately be examined by the Registry in accordance with Rule 16 and forwarded to the panel to which the action has been assigned or to the judge to whom the action has been assigned [Rules 17.2, 194.3 and .4].

3. The judge deciding on an Application for preserving evidence shall have all necessary powers of the Court.

1. The Court shall have the discretion - including where the Application is made pursuant to Rule 192.3 - to:

(a) inform the defendant about the Application and invite him to lodge, within a time period to be specified, an Objection to the Application for preserving evidence which shall contain: (i) the reasons why the Application shall fail; (ii) the facts and evidence relied on, in particular any challenge to the facts and evidence relied on by the applicant; (iii) where main proceedings on the merits of the case have not yet been started before the Court, the reasons why the action which will be started before the Court shall fail and an indication of the facts and evidence relied on in support;

(b) summon the parties to an oral hearing;

(c) summon the applicant to an oral hearing without the presence of the defendant;

(d) decide the Application without having heard the defendant.

2. In exercising its discretion, the Court shall take into account:

(a) the urgency of the action;

(b) whether the reasons for not hearing the defendant [Rules 192.3 and 197] appear well-founded;

(c) the probability that evidence may be destroyed or otherwise cease to be available [Rule 197].

3. The presiding judge may decide that he or the judge-rapporteur or other single judge or the standing judge may decide on the Application.

4. In cases of extreme urgency the standing judge appointed in accordance with Rule 345.5 may decide immediately on an Application to preserve evidence and the procedure to be followed on the Application.

5. If the Court decides to inform the defendant about the Application the Court will first give the applicant the possibility to withdraw the Application. In the event of such withdrawal the applicant may request that the Court shall order that the Application and its contents shall remain confidential.

6. If the patent the subject of the Application is also the subject of a Protective letter pursuant to Rule 207 the applicant may withdraw the Application pursuant to paragraph 5.

1. Where the Court decides to summon the parties to an oral hearing, the date for the oral hearing shall be set as soon as possible after the date of receipt of the Application for preserving evidence.

2. Rules 111 to 116 shall apply mutatis mutandis. Where the applicant is absent from the oral hearing without a reasonable excuse, the Court shall reject the Application for preserving evidence.

3. The decision of the Court on the Application for preserving evidence shall be given in writing as soon as possible after the closure of the oral hearing. If the Court deems appropriate, the decision may be given orally to the parties at the end of the oral hearing but shall as soon as practicable thereafter be given in writing.

^{Relation with Agreement: Article 60}

1. The Court may order, in particular, the following:

(a) preserving evidence by detailed description, with or without the taking of samples;

(b) physical seizure of allegedly infringing goods;

(c) physical seizure of the materials and implements used in the production and/or distribution of these goods and any related document;

(d) the preservation and disclosure of digital media and data and the disclosure of any passwords necessary to access them.

For the protection of confidential information the Court may order that any of the above be disclosed only to certain named persons and subject to appropriate terms of non-disclosure.

2. An order to preserve evidence shall specify that, unless otherwise ordered by the Court, the outcome of the measures to preserve evidence may only be used in the proceedings on the merits of the case.

3. The order to preserve evidence shall be enforceable immediately, unless the Court decides otherwise. The Court may set conditions to the enforceability of the order, specifying in particular:

(a) who may represent the applicant when the measures to preserve evidence are being carried out and under what conditions;

(b) any security which shall be provided by the applicant. If necessary, the Court may set penalties applicable to the applicant if these conditions are not observed.

4. The order to preserve evidence shall specify a person who shall carry out the measures referred to in paragraph 1 and present a written Report on the measures to preserve evidence, all in accordance with the national law of the place where the measures are executed, to the Court within a time period to be specified.

5. The person referred to in paragraph 4 shall be a professional person or expert, who guarantees expertise, independence and impartiality. Where appropriate and allowed under applicable national law, the person may be a bailiff or assisted by a bailiff. In no circumstances may an employee or director of the applicant be present at the execution of the measures.

6. The Court may order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear. The Court shall do so where the order to preserve evidence was made without the defendant having been heard, unless there are special circumstances not to do so. The Court shall decide whether it is appropriate to order the security by deposit or bank guarantee.

7. The order to preserve evidence shall indicate that an appeal may be lodged in accordance with Article 73 of the Agreement and Rule 220.1.

^{Relation with Agreement: Article 60(1)-(4)}

1. The Court may order measures to preserve evidence [Rule 196.1] without the defendant having been heard, in particular where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available.

2. Where measures to preserve evidence are ordered without the defendant having been heard, Rule 195 shall apply mutatis mutandis to the oral hearing without the presence of the defendant. In such cases, the defendant shall be given notice, immediately at the time of the execution of the measures.

3. Within 30 days after the execution of the measures, the defendant may request a review of the order to preserve evidence. The Request for review shall set out:

(a) the reasons why the order to preserve evidence shall be revoked or modified; and

(b) the facts and evidence relied on.

4. The Court shall order an oral hearing to review the order without delay. Rule 195 shall apply. The Court may modify, revoke or confirm the order. In case the order is modified or revoked the Court shall oblige the persons to whom confidential information has been disclosed to keep this information confidential [Rule 196.1].

^{Relation with Agreement: Article 60(6)}

1. The Court shall ensure that an order to preserve evidence is revoked or otherwise cease to have effect, upon request of the defendant, without prejudice to the damages which may be claimed, if, within a time period not exceeding 31 calendar days or 20 working days, whichever is the longer, from the date specified in the Court’s order with due account to the date where the Report referred to in Rule 196.4 shall be presented, the applicant does not start proceedings on the merits of the case before the Court.

2. Where the measures to preserve evidence are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent, the Court may order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by those measures [Rule 354.2].

^{Relation with Agreement: Article 60(8) and (9)}

1. The Court may, on a reasoned request by a party, order an inspection of products, devices, methods, premises or local situations in situ. For the protection of confidential information the Court may order that any of the above be disclosed only to certain named persons and subject to appropriate terms of non-disclosure in accordance with Article 58 of the Agreement.

2. Rules 192 to 198 shall apply mutatis mutandis. 

^{Relation with Agreement: Article 60}

1. Where a party has presented reasonably available and plausible evidence in support of its claim that a patent has been or is about to be infringed the Court may, whether before or after proceedings have been commenced, order a party not to remove from its jurisdiction any assets or particular assets located therein nor to deal in any assets, whether located within its jurisdiction or not.

2. Rules 192 to 198 shall apply mutatis mutandis. 

^{Relation with Agreement: Article 61}

1. Without prejudice to the possibility for parties or parties’ experts to carry out experiments, the Court may, on a reasoned request by a party, order an experiment to prove a statement of fact for the purpose of proceedings before the Court.

2. A party requesting to be allowed to prove a statement of fact by means of experiments shall lodge a request as soon as practicable in the written procedure or the interim procedure to carry out experiments which shall:

(a) identify the facts intended to be established by the experiments, describe the proposed experiments in detail and the reasons for carrying out the proposed experiments;

(b) propose an expert to carry out such experiments; and

(c) disclose any previous attempts to carry out similar experiments.

3. Other parties to the proceedings shall be invited to state whether they dispute the facts intended to be established by the experiments. They shall also be invited to comment on the request, including the identity of the expert proposed and the description of the experiments.

4. Unless otherwise ordered by the Court the party requesting experiments shall initially bear the costs of the experiment.

5. The order of the Court allowing the experiments shall specify the detailed experiments and:

(a) the name and address of the expert who is to carry out the experiments as Court’s expert and draw up the report on the experiments;

(b) the time period for carrying out the experiments and, where appropriate, the exact time and place where they are to be carried out;

(c) if necessary, other conditions for carrying out the experiments; and

(d) the time period for presenting the report on the experiments and, where appropriate, directions relating to the contents of the report.

6. Where appropriate, the Court may order that the experiments be carried out in the presence of the parties and their experts.

7. Once the report on the experiments is presented to the Court, it shall invite the parties to comment on it either in writing or during the oral hearing. The expert may be summoned to the oral hearing.

Provisional measures are treated by way of summary proceedings which shall consist of the following stages:

(a) a written procedure; and

(b) an oral procedure, which may include an oral hearing of the parties or of one of the parties.

1. An Application for provisional measures may be lodged by a party (hereinafter "the applicant") before or after main proceedings on the merits of the case have been started before the Court.

2. An Application for provisional measures shall contain:

(a) particulars in accordance with Rule 13.1(a) to (i);

(b) a indication of the provisional measures which are being requested [Rule 211.1];

(c) the reasons why provisional measures are necessary to prevent a threatened infringement, to forbid the continuation of an alleged infringement or to make such continuation subject to the lodging of guarantees;

(d) the facts and evidence relied on in support of the Application, including evidence to support the claim that provisional measures are necessary including the matters referred to in Rule 211.2 and .3; and

(e) a concise description of the action which will be started before the Court, including an indication of the facts and evidence which will be relied on in support of the main proceedings on the merits of the case.

3. Where the applicant requests that provisional measures be ordered without hearing the other party (hereinafter "the defendant"), the Application for provisional measures shall in addition contain:

(a) the reasons for not hearing the defendant having regard in particular to Rule 197; and

(b) information about any prior correspondence between the parties concerning the alleged infringement.

4. The applicant shall be under a duty to disclose any material fact known to it which might influence the Court in deciding whether to make an order without hearing the defendant including any pending proceedings and/or any unsuccessful attempt in the past to obtain provisional measures in respect of the patent.

5. Rule 14 shall apply mutatis mutandis. The applicant shall pay the fee for the Application for provisional measures, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.
Relation with Agreement: Articles 32(1)(c) and 62

1. If a person entitled to start proceedings under Article 47 of the Agreement considers it likely that an Application for provisional measures against him as a defendant may be lodged before the Court in the near future, he may file a Protective letter.

2. The Protective letter shall be filed with the Registry in the language of the patent and shall contain: 

(a) the name of the defendant or defendants filing the Protective letter and of the defendant’s representative;

(b) the name of the presumed applicant for provisional measures;

(c) postal and electronic addresses for service on the defendant filing the Protective letter and the names of the persons authorised to accept service;

(d) postal and, where available, electronic addresses for service on the presumed applicant for provisional measures and the names of the persons authorised to accept service if known;

(e) where available, the number of the patent concerned and, where applicable, information about any prior or pending proceedings referred to in Rule 13.1(h); and

(f) the statement that the letter is a Protective letter.

3. The Protective letter may contain:

(a) an indication of the facts relied on, which may include a challenge to the facts expected to be relied on by the presumed applicant and/or, where applicable, any assertion that the patent is invalid and the grounds for such assertion;

(b) any available written evidence relied on;

(c) the arguments of law, including the reasons why any Application for provisional measures should be rejected.

4. The defendant or defendants filing the Protective letter shall pay the fee for filing a Protective letter, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

5. The Registry shall as soon as practicable examine whether the requirements of paragraphs 2(a) to (f) and 4 have been complied with. If these requirements have been complied with, the Registry shall as soon as practicable:

(a) record the date of receipt and assign a number to the Protective letter;

(b) subject to paragraph 7, record the Protective letter in the register;

(c) provide details of the Protective letter to all divisions; and

(d) where an Application for provisional measures has already been lodged, inform the panel or the single judge dealing with the Application about the filing of the Protective letter.

6. If the defendant has not complied with the requirements of paragraph 2 the Registry shall as soon as practicable invite the defendant to:

(a) correct the deficiencies within 14 days of service of such notification; and

(b) where applicable, pay the fee referred to in paragraph 4.

7. The protective letter shall not be publicly available on the register until it has been forwarded to the applicant pursuant to paragraph 8.

8. Where an Application for provisional measures is subsequently lodged the Registrar shall forward a copy of the protective letter to the panel or judge appointed under Rule 208 together with the Application for provisional measures and shall forward a copy to the applicant as soon as practicable. 

9. If no Application for provisional measures has been lodged within six months from the date of receipt of the Protective letter, the Protective letter shall be removed from the register unless the person who has lodged the Protective letter has prior to the expiry of such period applied for an extension of six months and paid a fee for the extension in accordance with Part 6. Further extensions may be obtained on further payments of the fee.

10. Rule 15.2 shall apply mutatis mutandis.

1. The Application for provisional measures shall be examined by the Registry in accordance with Rule 16. The Registry shall in addition examine whether any Protective letter relevant for the Application is recorded in the register.

2. Where main proceedings on the merits of the case have not yet been started before the Court, Rule 17 (date of receipt, recording in the register, action number, assignment to panel) and Rule 18 (designation of judge-rapporteur by presiding judge) shall apply mutatis mutandis. In urgent cases, the presiding judge may decide that he or an experienced judge of the panel, acting as single judge, may decide on the Application in accordance with Rules 209 to 213 with a reduced time-table.

3. Where main proceedings on the merits of the case have already been started before the Court, the Application for provisional measures shall immediately be forwarded to the panel to which the action has been assigned or to the single judge. In urgent cases (where the action has not been assigned to a single judge), the presiding judge may decide that he or the judge-rapporteur, acting as single judge, may decide on the Application in accordance with Rules 209 to 213 with a reduced time-table.

4. The single judge deciding on the Application for provisional measures shall have all necessary powers of the Court.

^{Relation with Statute: Article 19}

1. Without prejudice to the Court’s decision on the Application for provisional measures, the Court shall have the discretion – including where the Application is made pursuant to Rule 206.3 – to: 

(a) inform the defendant about the Application and invite him to lodge, within a time period to be specified, an Objection to the Application for provisional measures which shall contain: (i) the reasons why the Application shall fail; (ii) the facts and evidence relied on, in particular any challenge to the facts and evidence relied on by the applicant; and (iii) where main proceedings on the merits of the case have not yet been started before the Court, the reasons why the action which will be started before the Court shall fail and the facts and evidence relied on in support;

(b) summon the parties to an oral hearing;

(c) summon the applicant to an oral hearing without the presence of the defendant.

2. In exercising its discretion pursuant to paragraph 1, the Court shall in particular take into account:

(a) whether the patent has been upheld in an opposition procedure before the European Patent Office or has been the subject of proceedings in any other court;

(b) the urgency of the action;

(c) whether the applicant has requested provisional measures without hearing the defendant and whether the reasons for not hearing the defendant appear well-founded; and

(d) any Protective letter filed by the defendant; the Court shall in particular consider summoning parties to an oral hearing if a relevant Protective letter has been filed by the defendant.

3. In cases of extreme urgency the standing judge appointed in accordance with Rule 345.5 may decide immediately on the Application for provisional measures and the procedure to be followed on the Application.

4. If the applicant has applied for provisional measures without hearing the defendant and the Court decides not to grant provisional measures without hearing the defendant the applicant may withdraw the Application and may request that the Court order that the Application and the contents of the Application remain confidential.

5. If the patent the subject of the Application is also the subject of a protective letter pursuant to Rule 207 the applicant may withdraw the Application pursuant to paragraph 4.

1. Where the Court decides to summon the parties to an oral hearing, the date for the oral hearing shall be set as soon as possible after the date of receipt of the Application for provisional measures.

2. The Court may order the parties to provide further information, documents and other evidence before or during the oral hearing, including evidence to enable the Court to make its decision in accordance with Rule 211. Part 2 of these Rules on Evidence shall be applicable only to the extent determined by the Court.

3. Rules 111 to 116 shall apply mutatis mutandis. Where the applicant is absent from the oral hearing without a reasonable excuse, the Court shall reject the Application for provisional measures.

4. The decision of the Court on the Application for provisional measures shall be given in writing as soon as possible after the closure of the oral hearing. If the Court deems appropriate, its decision may be given orally to the parties at the end of the oral hearing, prior to providing its decision in writing.

1. The Court may in particular order the following provisional measures:

(a) injunctions against a defendant;

(b) the seizure or delivery up of the goods suspected of infringing a patent right so as to prevent their entry into or movement within the channels of commerce;

(c) if an applicant demonstrates circumstances likely to endanger the recovery of damages, a precautionary seizure of the movable and immovable property of the defendant, including the blocking of his bank accounts and other assets;

(d) an interim award of costs.

2. In taking its decision the Court may require the applicant to provide reasonable evidence to satisfy the Court with a sufficient degree of certainty that the applicant is entitled to commence proceedings pursuant to Article 47, that the patent in question is valid and that his right is being infringed, or that such infringement is imminent.

3. In taking its decision the Court shall in the exercise of its discretion weigh up the interests of the parties and, in particular, take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction.

4. The Court shall have regard to any unreasonable delay in seeking provisional measures. 

5. The Court may order the applicant to provide adequate security for appropriate compensation for any injury likely to be caused to the defendant which the applicant may be liable to bear in the event that the Court revokes the order for provisional measures. The Court shall do so where interim measures are ordered without the defendant having been heard unless there are special circumstances not to do so. The Court shall decide whether it is appropriate to order the security by deposit or bank guarantee. The order shall be effective only after the security has been given to the defendant in accordance with the Court’s decision.

6. The order on provisional measures shall indicate that an appeal may be brought in accordance with Article 73 of the Agreement and Rule 220.1.

^{Relation with Agreement: Article 62(2) and (4)}

Commentary

Rule 211.4

According to R. 211.4 RoP, the Court shall have regard to any unreasonable delay caused by the Patentee in seeking provisional measures. The term “unreasonable delay” is of course open to interpretation.

In UPC_CFI_195/2024 (Amycel LLC  v. a redacted Polish producer), a delay of ten months between the finding of the allegedly infringing product in the Netherlands and the filing of the application for preliminary injunction was not considered to represent an unreasonable delay. According to the Local Division in The Hague, ten months were required to prepare technical reports as evidence for the infringement and the plaintiff started proceedings as soon as it had gathered reasonable evidence, which means that there was no unreasonable delay. 

The Local Division in The Hague described the standard to be applied in more detail item 25 of the order. Accordingly, the plaintiff must as soon as it has knowledge of the alleged infringement, investigate it, take the necessary measures to clarify it and obtain the evidence required to support its claims. In doing so, it must diligently initiate and complete the required steps at each stage in a timely fashion. As soon as the Applicant has all the knowledge and evidence that reliably enable a promising legal action, it must file the application for provisional measures without unreasonable delay.

1. The Court may order provisional measures without the defendant having been heard, in particular where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed. Rule 197 shall apply mutatis mutandis.

2. Where provisional measures are ordered without the defendant having been heard, Rule 210 shall apply mutatis mutandis to the oral hearing without the presence of the defendant. In such cases, the defendant shall be given notice of the provisional measures without delay and at the latest immediately at the time of execution of the measures.

3. The defendant may request a review. Rule 197.3 and .4 shall apply mutatis mutandis.

^{Relation with Agreement: Article 60(5) and (6)}

1. The Court shall ensure that provisional measures are revoked or otherwise cease to have effect, upon request of the defendant, without prejudice to the damages which may be claimed, if, within a time period not exceeding 31 calendar days or 20 working days, whichever is the longer, from the date specified in the Court’s order, the applicant does not start proceedings on the merits of the case before the Court. When specifying the date, the Court shall take due account, where applicable, of the date on which the Report referred to in Rule 196.4 shall be presented.

2. Where provisional measures are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent, the Court may order the applicant, upon request of the defendant, to provide the defendant with appropriate compensation for any injury caused by those measures [Rule 354.2].

^{Relation with Agreement: Article 60(9).}

1. An appeal by a party adversely affected may be brought against:

(a) final decisions of the Court of First Instance;

(b) decisions terminating proceedings as regards one of the parties;

(c) orders referred to in Articles 49(5), 59, 60, 61, 62 or 67 of the Agreement.

2. Orders other than those referred to in paragraph 1 and Rule 97.5, may be either the subject of an appeal together with the appeal against the decision or may be appealed with the leave of the Court of First Instance within 15 days of service of the Court’s decision to that effect.

3. In the event of a refusal of the Court of First Instance to grant leave within 15 days of the order of one of its panels a request for a discretionary review to the Court of Appeal may be made within 15 calendar days from the end of that period. Rule 333.3 shall apply mutatis mutandis. The request shall set out the matters referred to in Rule 221.2.

4. The Registrar shall assign the request for a discretionary review to the standing judge (Rule 345.5 and .8). The standing judge may deny the request without giving reasons. If the standing judge allows the request after having heard the other party, he shall order what further steps, if any, the parties shall take and within what time limits and the President of the Court of Appeal shall assign the review to a panel of the Court of Appeal for a decision. The Court of Appeal may consult the presiding judge or the judgerapporteur of the panel of the Court of First Instance which has refused the leave order.

5. The Court of Appeal may hear appeals against separate decisions on the merits in infringement proceedings and in validity proceedings together.

^{Relation with Agreement: Article 73}

1. A party adversely affected by a decision referred to in Rule 157 may lodge an Application for leave to appeal to the Court of Appeal within 15 days of service of the decision of the Court.

2. The Application for leave to appeal shall set out:

(a) the reasons why the appeal should be heard;

(b) where necessary, the facts, evidence and arguments relied on.

3. The Application for leave to appeal shall be assigned to the standing judge (Rule 345.5 and .8) who shall decide on granting leave to appeal.

4. If leave to appeal a cost decision is granted the standing judge shall decide the appeal.

1. Requests, facts, evidence and arguments submitted by the parties under Rules 221, 225, 226, 236 and 238 shall, subject to paragraph 2, constitute the subject-matter of the proceedings before the Court of Appeal. The Court of Appeal shall consult the file of the proceedings before the Court of First Instance.

2. Requests, facts and evidence which have not been submitted by a party during proceedings before the Court of First Instance may be disregarded by the Court of Appeal. When exercising discretion, the Court shall in particular take into account:

(a) whether a party seeking to lodge new submissions is able to justify that the new submissions could not reasonably have been made during proceedings before the Court of First Instance;

(b) the relevance of the new submissions for the decision on the appeal;

(c) the position of the other party regarding the lodging of the new submissions. 

^{Relation with Agreement: Article 73(4)} 

Commentary

According to UPC_CoA_365/2025  (order of 21 May 2025, Knaus Tabbert v. Yellow Spehre et al), insofar as the defendant of the first instance proceedings  asserts that the plaintiff’s ( of the first instance proceedings) financial situation is inadequate, it does not follow from the submission that the financial situation of plaintiff was already the subject of the first instance, nor that the defendant was not able to present the financial situation before the court of first instance. 

There is no reason why this submission should be made for the first time in the proceedings for an order of suspensive effect (see R. 222.2 VerfO).  An order to provide security is at the discretion of the court. The court of first instance is responsible for weighing up the relevant interests. The ordering of a security is not dependent on the application of a party, it can also be ordered ex officio (see UPC Court of Appeal, order of 3 March 2025, UPC_CoA_523/2024, APL_51115/2024, Sumi/Syngenta, para. 112 and 115). However, it is incumbent on the defendant to establish facts that make it necessary to order a security , as for example the poor financial situation of the plaintiff  (cf. Sumi/Syngenta R. 115). The fact that submissions on financial circumstances are necessary in the proceedings before the CFI is also appropriate. Findings on the financial circumstances of the claimant can only be made made after hearing the adverse party.

Findings of fact can also be necessary. The procedure for requesting suspensive effect, in which the court of appeal decides on the application without delay (R. 223.3 VerfO) is not suitable for this purpose.

1. A party may lodge an Application for suspensive effect, in accordance with Article 74 of the Agreement.

2. The Application for suspensive effect shall set out:

(a) the reasons why the lodging of the appeal shall have suspensive effect;

(b) the facts, evidence and arguments relied on.

3. The Court of Appeal shall decide the Application without delay.

4. In cases of extreme urgency the applicant may apply at any time without formality for an order for suspensive effect to the standing judge [Rule 345.5 and .8]. The standing judge shall have all the powers of the Court of Appeal and shall decide the procedure to be followed on the application, which may include a subsequent written Application.

5. There shall be no suspensive effect for an appeal of an order pursuant to Rule 220.2, Rule 220.3 or 221.3.

^{Relation with Agreement: Article 74}

1. A Statement of appeal shall be lodged by the appellant:

(a) within two months of service of a decision referred to in Rule 220.1(a) and (b); or

(b) within 15 days of service of an order referred to in Rule 220.1(c) or a decision referred to in Rule 220.2 or 221.3.

2. The Statement of grounds of appeal shall be lodged by the appellant:

(a) within four months of service of a decision referred to in Rule 220.1(a) and (b); or

(b) within 15 days of service of an order referred to in Rule 220.1(c) or a decision referred to in Rule 220.2 or 221.3.

^{Relation with Agreement: Article 73(1) and (2)}

The Statement of appeal shall contain:

(a) the names of the appellant and of the appellant’s representative;

(b) the names of the respondent and of the respondent’s representative;

(c) postal and electronic addresses for service on the appellant and on the respondent, as well as the names of the persons authorised to accept service;

(d) the date of the decision or order appealed against and the action number attributed to the file in proceedings before the Court of First Instance; and

(e) the order or remedy sought by the appellant, including any order for expedition of the appeal pursuant to Rule 9.3(b) and the reasons justifying such order for expedition.

The Statement of grounds of appeal shall contain:

(a) an indication of which parts of the decision or order are contested;

(b) the reasons for setting aside the contested decision or order; and

(c) an indication of the facts and evidence on which the appeal is based in accordance with Rule 222.1 and .2.

The Statement of appeal and the Statement of grounds of appeal shall be drawn up:

(a) without prejudice to Article 50(3) of the Agreement, in the language of the proceedings before the Court of First Instance; or

(b) where the parties have agreed in accordance with Article 50(2) of the Agreement, in the language in which the patent was granted. Where the parties have agreed in accordance with Article 50(2) of the Agreement, evidence of the respondent’s agreement shall be lodged by the appellant together with the Statement of appeal.

^{Relationship with Agreement: Article 50}

The appellant shall pay the fixed fee and, where applicable, the value based fee for the appeal, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

1. The Registry shall, as soon as practicable after the lodging of the Statement of appeal, examine whether the requirements of Rules 224.1, 225, 227 and 228 have been complied with.

2. If the appellant has not complied with the requirements referred to in Rules 225, 227 or 228, the Registry shall invite the appellant to:

(a) correct the deficiencies within 14 days of service of such notification; and

(b) where applicable, pay the fee for the appeal within said 14 days.

3. The Registry shall at the same time inform the appellant that if the appellant fails to correct the deficiencies or to pay the fee within the time stated, a decision by default may be given in accordance with Rule 357.

4. If the appellant has not met the requirements of Rules 225, 227 and 228 and fails to correct the deficiencies or pay the fee the Registry shall inform the President of the Court of Appeal who shall reject the appeal as inadmissible by a decision by default. He may give the appellant an opportunity to be heard beforehand.

5. If the appellant has not met the requirements of Rule 224.1, the Registry shall inform the President of the Court of Appeal who shall reject the appeal as inadmissible. He may give the appellant an opportunity to be heard beforehand.

1. If the Statement of appeal complies with the requirements referred to in Rule 229.1, the Registry shall:

(a) record the date of receipt to the Statement of appeal and an action number to the appeal file;

(b) record the appeal file in the register;

(c) inform the appellant of the action number and the date of receipt; and

(d) serve the Statement of appeal on all parties to the proceedings at first instance.

2. The action shall be assigned to a panel according to Rule 345.3 and .8.

3. The panel shall as soon as practicable decide whether to grant any order for expedition pursuant to Rule 225(e) having given the parties an opportunity to be heard.

The presiding judge of the panel to which the action has been assigned shall designate one legally qualified judge of the panel as judge-rapporteur. The presiding judge may designate himself as the judgerapporteur. The Registry shall as soon as practicable notify the appellant and respondent of the identity of the judge-rapporteur. 

1. If the language of the proceedings before the Court of Appeal is not the language of the proceedings before the Court of First Instance, the judge-rapporteur may order the appellant to lodge, within a time period to be specified, translations into the language of the proceedings before the Court of Appeal of:

(a) written pleadings and other documents lodged by the parties before the Court of First Instance, as specified by the judge-rapporteur;

(b) decisions or orders of the Court of First Instance. 

The judge-rapporteur shall at the same time inform the appellant that if the appellant fails to lodge the translations within the time period specified, a decision by default may be given in accordance with Rule 357.

2. If the appellant fails to lodge the translations under paragraph 1 within the time period specified, the judge-rapporteur shall reject the appeal by a decision by default in accordance with Rule 357. He may give the appellant an opportunity to be heard beforehand.

3. The appellant may request that documented costs of translations be taken into account when the Court fixes the amount of costs in accordance with Part 1, Chapter 5.

^{Relation with Agreement: Article 50(2) and (3)} 

1. The judge-rapporteur shall examine whether the Statement of grounds of appeal satisfies the requirements of Rule 226.

2. If the Statement of grounds of appeal does not comply with the requirements of Rule 226, the judgerapporteur shall give the appellant leave to amend the Statement of grounds of appeal within such period as he may decide. If the appellant fails to amend the Statement within such period the judge-rapporteur may reject the appeal as inadmissible. He shall give the appellant an opportunity to be heard beforehand. 

3. Grounds of appeal which are not raised within the period specified for the Statement of grounds of appeal in Rule 224.2 shall not be admissible.

1. The appellant may challenge a decision to reject the appeal as inadmissible under Rules 224.1 or 233.2 within one month of service of the decision, without providing new grounds of appeal.

2. The action shall be assigned to a panel according to Rule 345.3 and .8. 

3. If a decision to reject an appeal as inadmissible is set aside, the appeal shall take its normal course.

1. Within three months of service of the Statement of grounds of appeal pursuant to Rule 224.2(a), any other party to proceedings before the Court of First Instance (hereinafter "respondent") may lodge a Statement of response, which shall be served on the appellant.

2. Within 15 days of service of grounds of appeal pursuant to Rule 224.2(b), any other party to proceedings before the Court of First Instance (hereinafter "respondent") may lodge a Statement of
response, which shall be served on the appellant.

3. If the respondent fails to lodge a Statement of response, the Court of Appeal may give a reasoned decision.

1. The Statement of response shall contain:

(a) the names of the respondent and the respondent’s representative;

(b) postal and electronic addresses for service on the respondent and the names and addresses of the persons authorised to accept service;

(c) the action number of the appeal file; and

(d) a response to the grounds of appeal.

2. The respondent may support the decision of the Court of First Instance on grounds other than those given in the decision.

1. A party who has not lodged a Statement of appeal within the period referred to in Rule 224.1 may still bring an appeal by way of cross-appeal within the period referred to in Rule 235 if one of the other parties has lodged a Statement of appeal.

2. A Statement of cross-appeal shall be included in the Statement of response. It shall comply with the requirements of Rules 225 and 226. Rules 229, 233 and 234 shall apply mutatis mutandis to the Statement of cross-appeal.

3. A Statement of cross-appeal shall not be admissible in any other way or at any other time.

4. A cross-appeal shall be treated as an appeal as far as the fee for the appeal is concerned. Rule 228 shall apply mutatis mutandis.

5. If the Statement of appeal is withdrawn, any Statement of cross-appeal shall be deemed to be withdrawn.

1. The appellant may, within two months of service of any Statement of cross-appeal under Rules 237, 235.1, lodge a Reply to the Statement of cross-appeal which shall contain a response to the grounds of appeal raised in the Statement of cross-appeal.

2. The appellant may, within 15 days of service of the Statement of cross-appeal under Rules 237 and 235.2, lodge a Reply to the Statement of cross-appeal which shall contain a response to the grounds of appeal raised in the Statement of cross-appeal.

3. Rule 28 shall apply mutatis mutandis.

1. The panel to which the action has been assigned may refer it to the full Court of Appeal if the panel considers, on a proposal from the presiding judge, the case to be of exceptional importance and, in particular, where the decision in the action may affect the consistency and unity of the case law of the Court.

2. The presiding judge of the panel shall request the President of the Court of Appeal and the two judges of the Court of Appeal who are members of the Presidium to appoint the judges of the Court of Appeal to the full Court. The appointees shall be the President of the Court of Appeal and not less than ten (legally and technically qualified) judges of the Court of Appeal to represent the initial two panels of the Court of Appeal. In the event that the Court of Appeal shall have more than two panels the appointees to the full Court shall increase by five judges, (legally and technically qualified), for each additional panel.

3. Decisions of the full Court shall be by no less than a three-quarters majority of the judges of the full Court.

1. Upon the expiry of the periods specified in Rules 224 to 238 the judge-rapporteur shall make all necessary preparations for the oral hearing. Subject always to the provisions of Rule 222, the judgerapporteur shall, to the extent appropriate, have the powers and exercise the duties set out in Rules 101 to 110 mutatis mutandis.

2. As soon as the judge-rapporteur considers that the appeal is ready for oral hearing he shall summon the parties to the oral hearing. Except for appeals against the orders referred to in Rule 220.1(c) and 220.2, and subject to any order for expedition pursuant to Rule 230.3, at least two months’ notice shall be given unless the parties agree to a shorter time period. The interim procedure shall be deemed closed and oral procedure shall start immediately on the giving of such summons. The presiding judge shall, in consultation with the judge-rapporteur take over the management of the action.

Subject to Rule 241 the oral hearing shall be held before the panel and shall be directed by the presiding judge. Subject always to Rule 222, Rules 111, 112, 115, 116 and 117 shall apply mutatis mutandis.

The oral hearing for an appeal of a cost decision pursuant to Rule 157 shall be heard by the standing judge [Rule 345.5 and .8] who shall have all the powers of the Court of Appeal. 

1. The Court of Appeal shall either reject the appeal or set the decision or order aside totally or in part substituting its own decision or order, including an order for costs both in respect of the proceedings at first instance and on appeal.

2. The Court of Appeal may:

(a) exercise any power within the competence of the Court of First Instance;

(b) in exceptional circumstances refer the action back to the Court of First Instance for decision or for retrial [Rule 243]. It shall not normally be an exceptional circumstance justifying a referral back that the Court of First Instance failed to decide an issue which it is necessary for the Court of Appeal to decide on appeal.

^{Relation with Agreement: Article 75}

1. The decision referring an action back to the Court of First Instance shall specify whether the same panel whose earlier decision or order is revoked shall deal further with the action or whether another panel shall be appointed by the presiding judge of the division concerned.

2. Where an action is referred back to the Court of First Instance, the Court shall be bound by the decision of the Court of Appeal and its ratio decidendi.

^{Relation with Agreement: Article 75}

1. An Application for rehearing may be lodged by any party adversely affected by a final decision (hereinafter "the final decision") of the Court of First Instance for which the time for lodging an appeal has expired or of the Court of Appeal (hereinafter "the petitioner").

2. The Application for rehearing shall be lodged at the Court of Appeal within the following periods: 

(a) where the Application for rehearing is based on the ground of a fundamental procedural defect, within two months of the discovery of the fundamental defect or of service of the final decision,
whichever is the later;

(b) where the Application for rehearing is based on an act which has been held, by a final court decision, to constitute a criminal offence, within two months of the date on which the criminal offence has been so held or service of the final decision, whichever is the later;

(c) but in any event no later than ten years of service of the final decision. 

^{Relation with Agreement: Article 81}

1. The Application for rehearing shall contain:

(a) the names of the petitioner and of the petitioner’s representative;

(b) postal and electronic addresses for service on the petitioner and the names and addresses of the persons authorised to accept service; and

(c) an indication of the decision to be reviewed.

2. The Application for rehearing shall indicate the reasons for setting aside the final decision, as well as the facts and evidence on which the Application is based.

A fundamental procedural defect under Article 81(1) of the Agreement may have occurred, for example, where:

(a) a judge of the Court took part in the decision in breach of Article 17 of the Agreement or Article 7 of the Statute;

(b) a person not appointed as a judge of the Court sat on the panel which took the final decision;

(c) a fundamental violation of Article 76 of the Agreement occurred in the proceedings which have led to the final decision;

(d) the decision was made without deciding on a request relevant to that decision; or

(e) a breach of Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms has occurred.

Commentary

In UPC_CoA_335/2024 (10x Genomics v. NanoString Technologies, order of 6 August 2024) the Court of Appeal decided that a statement of reasons for a decision “After assessment by the technically competent court” is not to be understood as meaning that the court has used the personal opinion of one or more of its judges as evidence for which no (sufficient) supporting evidence has been presented. Rather, it means that the court is particularly equipped and qualified to assess the arguments and evidence presented in a technically complex matter, especially if it is clear from the order that the court based its assessment not only on the parties' submissions, but also on the description of the patent in dispute itself and on the evidence presented.

1. An Application for rehearing based on the ground of a fundamental procedural defect is only admissible where an objection in respect of the procedural defect was raised during the proceedings before the Court of First Instance or the Court of Appeal and dismissed by the Court, except where such objection could not have been raised during the proceedings before the Court of First Instance or the Court of Appeal.

2. An application for rehearing based upon the ground of a fundamental procedural defect is not admissible where the party could have brought an appeal in respect of the defect but failed to do so.

A criminal offence shall only be considered to have occurred if it is finally held to be such an offence by a competent court or authority. A conviction is not necessary.

The petitioner shall pay the fee for the rehearing, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis. The Court may waive payment of the fee in the circumstances contemplated by Rule 245.2(a) or (b).

Rule 230.1 shall apply mutatis mutandis.

The lodging of an Application for rehearing shall not have suspensive effect unless the Court of Appeal decides otherwise.

^{Relation with Agreement: Article 81(2)} 

1. The Registry shall, as soon as practicable after the lodging of the Application for rehearing, examine whether the requirements of Rules 245, 246 and 250 have been complied with.

2. If the petitioner has not complied with the requirements referred to in paragraph 1, the Registry shall invite the petitioner to:

(a) correct the deficiencies within 14 days; and

(b) where applicable, pay the fee for the rehearing within 14 days.

If the petitioner fails to correct the deficiencies or pay the fee the case shall be assigned to the standing judge by the Registrar (Rule 345.5 and .8) who may reject the Application for rehearing as inadmissible. He shall give the petitioner an opportunity to be heard beforehand.

1. Immediately after the Application for rehearing has been recorded in the register, the Registry shall serve a copy of the Application for rehearing on all other parties and shall inform the President of the Court of Appeal that a Request for rehearing has been lodged.

2. The action shall be assigned to a panel consisting of three legally qualified judges. The President of the Court of Appeal may order that judges of the Court who participated in taking the decision to be reviewed shall not sit on the panel.

After hearing the parties the panel may make:

(a) a decision to reject the Application for rehearing as not allowable; such a decision shall be by a majority vote of the judges on the panel.

(b) a decision to allow the Application for rehearing; such a decision shall set aside or suspend the decision under review, in whole or in part, and re-open the proceedings for a new hearing and decisions. Where proceedings are re-opened, the panel shall give directions for the future proceedings.

^{Relation with Agreement: Article 81(3)}

1. In any proceedings before the Court, the Registry shall, as soon as practicable in the proceedings, of its own motion, examine whether an opt-out has effect for the patent concerned.

2. Where the Registry notes that two or more actions concerning the same patent are initiated before several divisions (whether or not between the same parties), it shall as soon as practicable inform the divisions concerned.

^{Relation with Agreement: Article 83(3) and (4)}

^{Relation with Statute: Articles 23 and 24}

All pleadings and documents lodged with pleadings shall bear a time and a date which shall be the time and date of receipt of pleadings at the Registry. The time shall be the local time of the Registry. The Registrar shall be responsible for time and date marking.

1. Without prejudice to Articles 58 and 60(1) of the Agreement and subject to Rules 190.1, 194.5, 196.1, 197.4, 199.1, 207.7, 209.4, 315.2 and 365.2, and following, where applicable, redaction of personal data within the meaning of Regulation (EU) 2016/679 and confidential information according to paragraph 2

(a) decisions and orders made by the Court shall be published,

(b) written pleadings and evidence, lodged at the Court and recorded by the Registry shall be available to the public upon reasoned request to the Registry; the decision is taken by the judge-rapporteur after consulting the parties.

2. A party may request that certain information of written pleadings or evidence be kept confidential and provide specific reasons for such confidentiality. To this end content of the register is made publicly available according to paragraph 1 (b) only 14 days after it has been available to all recipients. The Registrar shall ensure that beyond this time period information subject of a request for confidentiality shall not be made available pending an Application pursuant to paragraph 3 or an appeal pursuant to Rule 220.2. When a party lodges a request that parts of written pleadings or evidence shall be kept confidential, he shall also provide copies of the said documents with the relevant parts redacted when making the request.

3. A member of the public may lodge an Application with the Court for an order that any information excluded from public access pursuant to paragraph 2 may be made available to the applicant.

4. The Application shall contain:

(a) details of the information alleged to be confidential, so far as possible;

(b) the grounds upon which the applicant believes the reasons for confidentiality should not be accepted; and

(c) the purpose for which the information is needed.

5. The Court shall invite written comments from the parties prior to making any order.

6. The Court shall allow the Application unless legitimate reasons given by the party concerned for the confidentiality of the information outweigh the interest of the applicant to access such information. 

7. The Registrar shall as soon as practicable take all such steps with regard to access to the register as may be necessary to give effect to an order of the Court under this Rule.

^{Relation with Agreement: Articles 10, 45, 58 and 60(1)} 

^{Relation with Statute: Article 24(2)}

1. Without prejudice to Article 60(1) of the Agreement and Rules 190.1, 194.5, 196.1, 197.4, 199.1, 207.7, 209.4, 315.2 and 365.2 a party may make an Application to the Court for an order that certain information contained in its pleadings or the collection and use of evidence in proceedings may be restricted or prohibited or that access to such information or evidence be restricted to specific persons.

2. The Application shall contain the grounds upon which the applicant believes the information or evidence in question should be restricted in accordance with Article 58 of the Agreement.

3. The Application shall be made at the same time as lodging a document containing the information or evidence and shall provide a copy of the unredacted relevant document and, if applicable, a copy of the redacted document.

4. The Court shall invite written comments from the representatives of the other parties prior to making any order.

5. The Court may allow the Application considering in particular whether the grounds relied upon by the applicant for the order significantly outweigh the interest of the other party to have full access to the information and evidence in question.

6. The number of persons referred to in paragraph 1 shall be no greater than necessary in order to ensure compliance with the right of the parties to the legal proceedings to an effective remedy and to a fair trial, and shall include, at least, one natural person from each party and the respective lawyers or other representatives of those parties to the legal proceedings.

7. The Registrar shall as soon as practicable take all such steps with regard to access to the evidence as may be necessary to give effect to the order of the Court under this Rule.

^{Relation with Agreement: Article 58}

1. A party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including adding a counterclaim. Any such application shall explain why such change or amendment was not included in the original pleading.

2. Subject to paragraph 3, leave shall not be granted if, all circumstances considered, the party seeking the amendment cannot satisfy the Court that:

(a) the amendment in question could not have been made with reasonable diligence at an earlier stage; and

(b) the amendment will not unreasonably hinder the other party in the conduct of its action. 

3. Leave to limit a claim in an action unconditionally shall always be granted.

4. The Court may re-consider fees already paid in the light of an amendment.

Commentary

Rule 263 RoP provides the framework for parties seeking to amend their claims or cases during proceedings before the Unified Patent Court (UPC). Such amendments may include changes to the claims, the introduction of counterclaims, or other substantial modifications to the case as initially pleaded. 

Key Considerations under Rule 263

• Reasonable Diligence: To obtain leave, the requesting party must demonstrate that the amendment could not have been reasonably included in the original submission despite diligent preparation. 
• Impact on the Other Party: The Court will assess whether the proposed amendment would unreasonably hinder the other party’s ability to conduct its case. This assessment includes consideration of the timing, scope, and substance of the proposed change, as well as the stage of the proceedings.
• Limitation of Claims: Under paragraph 3, the Court is required to grant leave unconditionally for a party to limit its claims.

The Local Division Düsseldorf clarified the application of Rule 263 in the context of revocation counterclaims (UPC_CFI_11/2024, Grundfos Holding A/S v. Hefei Xinhu Canned Motor Pump Co., Ltd., Decision of 8 May 2025); the case concerned the admissibility of new prior art introduced in a reply to a revocation counterclaim. The Division confirmed that such amendments constitute an extension of the counterclaim under Rule 263 and are subject to the same rigorous standards as other amendments. Similarly, the introduction of a new line of attack based on already submitted prior art requires a comparable justification, including demonstrating that it could not have been reasonably included at the time of the original counterclaim. The burden of proof rests on the party seeking to introduce the new prior art or line of attack to establish both due diligence and the absence of unfair prejudice to the opposing party.

In UPC_CFI_9/2023 (LD Munich, Huawei Technologies v. Netgear Inc. et al., order of 11 December 2023), it was confirmed that under Rule 263.1 RoP, a party can request permission to change its claim or to amend its case at any stage of the proceedings unless the proposed change/amendment (a) could not have been made earlier with due diligence and (b) does not unduly hinder the other party in its conduct of the proceedings. The Local Division held that the plaintiff acted with due diligence by waiting for the conclusion of the EPO limitation procedure, avoiding the necessity of constantly adjusting its claim to unpredictable developments in the limitation procedure. Procedurally, filing a complaint based on the still unrestricted European Patent 3 678 321 from the outset would not have been more economically advantageous. Therefore, the change of the claim after the limitation procedure does not unreasonably hinder the defendants. Additionally, when multiple patents are jointly pursued in the same infringement proceedings, the court is obligated to grant the defendants largely the same defence opportunities for the second patent as they would have in the case of a new, separate lawsuit. This can include extending or prolonging response deadlines. Furthermore, the option of separating the subject of the claim expansion exists, depending on the specific circumstances. To sum up, When planning to base an action on two or more European Patents, with one or more patents intended for limitation before the European Patent Office under Article 105a EPC, the complaint before the UPC can either encompass all patents from the outset, adjusting claims during the proceedings, or initially focus on patents not subject to limitation and later expand the claim under Rule 263.1 RoP after the conclusion of the limitation procedure.

With a second order lodged on the same day as the above discussed first order, the Division asked the parties to comment on the - in view of the Division reasonable – separation of the subject of the claim expansion.

Where these Rules provide that a party shall or may be given an opportunity to be heard before the Court makes an order or takes some action, the Court shall or may (as the case may be) request the parties to provide written submissions within a specified period and/or shall or may invite the parties to an oral hearing on a fixed date by the Court. The Court may also order that a hearing takes place by telephone or video conference. Rules 105 and 106 shall apply mutatis mutandis.

1. As long as there is no final decision in an action, a claimant may apply to withdraw his action. The Court shall decide the application after hearing the other party. The application to withdraw shall not be permitted if the other party has a legitimate interest in the action being decided by the Court.

2. If withdrawal is permitted, the Court shall:

(a) give a decision declaring the proceedings closed;

(b) order the decision to be entered on the register; and

(c) issue a cost decision in accordance with Part 1, Chapter 5.

The withdrawal of an action by the claimant shall have no effect on any counterclaim in the action. The Court may however refer any counterclaim for revocation to the Central Division.

1. At any stage of the proceedings where a question is raised before the Court and the Court considers that a decision on the question by the Court of Justice of the European Union (“CJEU”) is necessary before the Court can give judgment, the Court of First Instance may and the Court of Appeal shall request the CJEU to give a ruling thereon.

2. The Court shall in requesting a ruling follow the procedure set out in the Rules of the CJEU.

3. If the Court requests the CJEU to apply its expedited procedure the request shall in addition set out:

(a) the matters of fact and law which establish its urgency; and

(b) the reasons why an expedited ruling is appropriate.

4. The Registrar shall as soon as practicable forward the request and any request to apply the expedited procedure to the Registrar of the CJEU.

5. The Court may stay the proceedings. Where it does not stay proceedings, it shall not give judgement until the CJEU has given a ruling on the question.

Where an action for damages has been brought against a Contracting Member State pursuant to Article 22 of the Agreement, the President of the Court of Appeal shall, as soon as practicable following a request from the competent authority in the Contracting Member State, provide the competent authority with copies of all pleadings, evidence, decisions and orders available to the Court in its proceedings that are relevant to the action for damages. The President of the Court of Appeal shall have an opportunity to comment. 

1. For service of the Statement of claim within the Contracting Member States the law of the European Union on the service of documents in civil and commercial matters [Regulation (EU) 2020/1784] and the rules set out in this Section, in particular Rule 271.2 shall apply.

2. For the purpose of Rules 270 to 275 the term Statement of claim shall, where appropriate, mean all originating pleadings in actions referred to in Article 32(1) of the Agreement.

1. The Registry shall serve the Statement of claim by electronic means if the conditions referred to in Article 19 of the Regulation (EU) 2020/1784 are met

(a) on the defendant at an electronic address which the defendant has provided for the purpose of service in the proceedings; or

(b) on a representative of the defendant if the defendant has provided the electronic address of a representative pursuant to Rule 8.1 as an address at which the defendant may be served with the Statement of claim; or

(c) on a representative of the defendant pursuant to Rule 8.1 if the representative has notified the Registry or the claimant that he accepts service of the Statement of claim on behalf of the defendant at an electronic address.

2. Where a representative pursuant to Rule 8.1 accepts service on behalf of a party service may be effected within the closed electronic system of the UPC Case Management System (CMS).

3. For the purpose of serving a Statement for revocation [Rule 44] or of serving a Statement for declaration of non-infringement [Rule 63], reference to representative under paragraph 2(b) or (c) shall additionally include professional representatives and legal practitioners as defined in Article 134 EPC who are recorded as the appointed representative for the patent, the subject of the proceedings, in the Register for unitary patent protection [Regulation (EU) No 1257/2012, Article 2(e)] or in the national patent register [Rule 8.5(a)].

4. Where service by electronic means cannot be effected, the Registry shall serve the Statement of claim on the defendant by:

(a) any other method foreseen by the law of the European Union on the service of documents in civil and commercial matters [Regulation (EU) 2020/1784], in particular by registered letter with
acknowledgement of receipt or equivalent [Article 18 Regulation (EU) 2020/1784]; or 

(b) where service in accordance with paragraph 4(a) could not be effected any method permitted by the law of the Member State of the European Union where service is to be effected or authorised by the Court under Rule 275.

5. Service under this Section shall be effected at the following place: 

(a) where the defendant is a company or other legal person, at its statutory seat, central administration or principal place of business within the Contracting Member States or at any place within the Contracting Member States where the company or other legal person has a permanent or temporary place of business;

(b) where the defendant is an individual, at his usual or last known residence within the Contracting Member States; or

(c) for the purpose of serving a Statement for revocation [Rule 44] or of serving a Statement for a declaration of non-infringement [Rule 63], at the place of business of a professional representative or legal practitioner as defined in Article 134 EPC who is recorded as the appointed representative for the patent, the subject of the proceedings, in the Register for unitary patent protection [Regulation (EU) No 1257/2012, Article 2(e)] or of the patent office of a Contracting Member State. 

6. Subject to Rule 272.2 and .3, a Statement of claim served in accordance with paragraphs 1 to 5 is deemed to be served on the defendant:

(a) where service takes place by means of electronic communication, on the day when the relevant electronic message was sent (GMT+1);

(b) where service takes place by registered letter with acknowledgement of receipt or equivalent such letter shall be deemed to be served on the addressee on the tenth day following posting unless it has failed to reach the addressee, has in fact reached him on a later date or the acknowledgement of receipt or equivalent has not been returned. Such service shall, except where paragraph 8 applies, be deemed effective even if acceptance of the letter has been refused.

7. The Registry shall advise the defendant that he may refuse to accept a Statement of Claim if it is not written or not accompanied by a translation into a language that he understands or that is an official language of the place where service is to be effected, by enclosing with the document to be served form L in Annex I of Regulation (EU) 2020/1784.

8. Where the defendant is entitled to refuse service and where he has notified the refusal to the Registry within two weeks of the attempted service together with an indication of the language(s) he understands, the Registry shall inform the claimant. The claimant shall provide to the Registry translations of at least the Statement of claim and the information required in Rule 13.1(a) to (p) in a language provided for by paragraph 7.

Commentary

In UPC_CoA_320/2023, order of 13 October 2023, the Court of Appeal stated in its 1st headnote that under Rule 271 RoP, a Statement of claim, even if it refers to or announces the later submission of Annexes, can be validly served on a defendant, provided that the Statement of claim without the Annexes enables the defendant to assert its rights in legal proceedings before the courts of the UPC. A Statement of claim must therefore at least state with certainty the subject matter and cause of action.

1. The Registry shall inform the claimant of the date on which the Statement of claim is deemed served under Rule 271.6.

2. Where the Registry has served the Statement of claim by registered letter with acknowledgement of receipt or equivalent and the Statement of claim is returned to the Registry for any reason, the Registry shall inform the claimant.

3. Paragraph 2 shall apply mutatis mutandis where the Registry has served the Statement of claim by means of electronic communication and the relevant electronic message appears not to have been received. 

This Section applies to service of a Statement of claim outside the Contracting Member States. 

1. Where a Statement of claim is to be served outside the Contracting Member States, it shall be so served by the Registry

(a) by any method provided by: (i) The law of the European Union on the service of documents in civil and commercial matters [Regulation (EU) 2020/1784] where it applies; (ii) The Hague Service Convention or any other applicable convention or agreement where it applies; or (iii) to the extent that there is no such convention or agreement in force, either by service through
diplomatic or consular channels from the Contracting Member State in which the sub-registry of the relevant division is established;

(b) where service in accordance with paragraph 1(a) could not be effected by any method permitted by the law of the state where service is to be effected or as authorised by the Court under Rule 275.

2. No Statement of claim may be served under this Rule 274 in a manner which is contrary to the law of the state where service is effected.

3. The Registry shall inform the claimant of the date on which the Statement of claim is deemed served under paragraph 1.

4. The Registry shall inform the claimant if for any reason service pursuant to paragraph 1 cannot be effected.

1. Where service in accordance with Section 1 or 2 could not be effected the Court on an application by the claimant that there is a good reason to authorise service by a method or at a place not otherwise permitted by this chapter, the Court may by way of order permit service by an alternative method or at an alternative place.

2. On a reasoned request by the claimant, the Court may order that steps already taken to bring the Statement of claim to the attention of the defendant by an alternative method or at an alternative place is good service.

3. An order under this rule shall specify: 

(a) the method or place of service;

(b) the date on which the Statement of claim is deemed served; and

(c) the period for filing the Statement of defence.

4. No order for alternative service under this Rule shall be made permitting service in a manner that is contrary to the law of the state where service is to be effected.

Commentary

In UPC_CoA_69/2024 (NEC Corp. v. TCL, order of 29 July 2024) the Court of Appeal stated that while Regulation 2020/1784 is intended for intra-Community service, the Hague Convention applies for transmission of judicial documents abroad in cross border litigation in relations with third states. Service outside the Contracting Member States is governed by R. 273 and 274 RoP. Art. 15.2 of the Hague Convention provides that each Contracting State shall be free to declare that the judge may give judgment even if no certificate of service or delivery has been received, if all the following conditions are fulfilled:

a) the document was transmitted by one of the methods provided for in the Convention,

b) a period of time of not less than six months, considered adequate by the judge in the particular case, has elapsed since the date of the transmission of the document, 

c) no certificate of any kind has been received, even though every reasonable effort has been made to obtain it through the competent authorities of the State addressed. 

The implication of Article 15.2 of the Hague Convention is that an attempt shall normally be made to serve the Statement of claim by any method provided for by the Hague Convention shall be made, before the Court authorises or orders service by an alternative method or at an alternative place (R. 274.1(b) and R. 275 RoP). R. 275.1 RoP includes a requirement of a prior service attempt. This precludes an interpretation that fully ignores this requirement. It would also be contrary to the Hague Convention that, as said, implies a prior service attempt in accordance with the Convention.

In UPC_CoA_205/2024 (Nera Innovations Ltd. v. Xiaomi et al., order of 6 August 2024) the Court of Appeal refers to the guarantee of actual and effective receipt of documents, that is to say, service on the defendant, together with the existence of a period of time sufficient to enable the defendant to prepare his or her defence, is a requirement of respect for the right to effective judicial protection enshrined in Art. 47 of the Charter of Fundamental Rights of the European Union. Authority for a subsidiary to receive on behalf of its parent company judicial documents intended for it cannot be presumed, otherwise there is a risk of prejudicing the parent company’s rights of defence. (See judgment of the CJEU of 11 July 2024 in Case C-632/22 AB Volvo v Transsaqui S.L., ECLI:EU:C:2024:601, paras 50-51). A defendant company in China can not, as a starting point, be served a Statement of claim via a company within the same group in a Contracting Member State. Such a group company cannot automatically be seen as a statutory seat, central administration or principal place of business of a defendant company in China, nor a place where such defendant company has a permanent or temporary place of business. This view is supported by the principle of corporate separation prevalent in national law, which is also a source of law for the Court when interpreting the RoP (Art. 24(1)(e) UPCA).

1. Any order or decision of the Court shall be served on each of the parties in accordance with the provisions of Sections 1, 2 or 3 of this Chapter 2, as the case may be.

2. Decisions by default pursuant to Rule 355 resulting from failure of the defendant to lodge a Defence to revocation [Rule 50] or failure to lodge a Defence to the Statement for a declaration of noninfringement [Rule 67] within the time limit set by these Rules or by the Court, may be served on the defendant at the place of business of a professional representative or legal practitioner as defined in Article 134 EPC who is recorded as the appointed representative for the subject European patent with unitary effect, the subject of the proceedings, in the Register for unitary patent protection [Regulation (EU) No 1257/2012, Article 2(e)] or in the national patent register [Rule 8.5(a)].

No decision by default shall be entered under Part 5, Chapter 11 unless the Court is satisfied that either:

(a) the Statement of claim was served by a method prescribed by the internal law of the state addressed for the service of documents in domestic actions upon persons who are within its territory; or

(b) the Statement of claim was actually served on the defendant under this Chapter 2. 

1. As soon as practicable after written pleadings have been received at the Registry, the Registry shall serve the pleadings and any other document lodged with the pleadings on the other party by means of electronic communication except if the pleading contains a request for an ex parte proceeding.

2. Where service by means of electronic communication cannot be effected, the Registry shall serve the written pleadings on the party by:

(a) registered letter with acknowledgement of receipt or equivalent; or

(b) any method authorised by the Court under Rule 275.

3. Service under paragraph 2(a) shall be effected at the following place:

(a) where the party is a company or other legal person: at its statutory seat, central administration, principal place of business or at any place within the Contracting Member States where the company or other legal person has a place of business; 

(b) where the party is an individual: at his usual or last known residence within the Contracting Member States.

4. Rule 271.6 and 272 shall apply mutatis mutandis.

5. Where a party is represented pursuant to Rule 8.1, the pleadings and other documents referred to in paragraph 1 shall be served on that representative. Paragraph 2 shall apply mutatis mutandis.

Where the electronic address for service of a party changes, that party must give notice in writing of the change as soon as it has taken place to the Registry and every other party [Rule 6.3].

A representative of a party shall not misrepresent cases or facts before the Court either knowingly or with good reasons to know.

^{Relation to Agreement: Article 48(6)}

1. A representative who claims to be representing a party shall be accepted as such provided however the Court may order a representative to produce a written authority if his representative powers are challenged.

2. In the event of a successful challenge to a representative’s authority pursuant to paragraph 1 the Court may make an order pursuant to Rule 291.

1. A representative pursuant to Article 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Member State of the European Union. A lawyer within the meaning of Article 48(1) of the Agreement is a person who is authorised to pursue professional activities under a title referred to in Article 1 of Directive 98/5/EC and by way of exception a person with equivalent legal professional qualifications who, owing to national rules, is permitted to practice in patent infringement and invalidity litigation but not under such title. In subsequent actions the representative may refer to the certificate previously lodged.

2. A representative pursuant to Article 48(2) of the Agreement shall lodge at the Registry the European Patent Litigation Certificate as defined by the Administrative Committee or otherwise justify that he has appropriate qualifications to represent a party before the Court. In subsequent actions such representative may refer to the certificate or other evidence of appropriate qualification previously lodged.

1. Where a client seeks advice from a lawyer or a patent attorney he has instructed in a professional capacity, whether in connection with proceedings before the Court or otherwise, then any confidential communication (whether written or oral) between them relating to the seeking or the provision of that advice is privileged from disclosure, whilst it remains confidential, in any proceedings before the Court or in arbitration or mediation proceedings before the Centre. 

2. This privilege applies also to communications between a client and a lawyer or patent attorney employed by the client and instructed to act in a professional capacity, whether in connection with proceedings before the Court or otherwise. 

3. This privilege extends to the work product of the lawyer or patent attorney (including communications between lawyers and/or patent attorneys employed in the same firm or entity or between lawyers and/or patent attorneys employed by the same client) and to any record of a privileged communication.

4. This privilege prevents the lawyer or patent attorney and his client from being questioned or examined about the contents or nature of their communications.

5. This privilege may be expressly waived by the client. 

6. For the purpose of Rules 287 and 288:

(a) the expression “lawyer” shall mean a person as defined in Rule 286.1 and any other person who is qualified to practise as a lawyer and to give legal advice under the law of the state where he practises and who is professionally instructed to give such advice. 

(b) the expression “patent attorney” shall include a person who is recognised as eligible to give advice under the law of the state where he practises in relation to the protection of any invention or to the prosecution or litigation of any patent or patent application and is professionally consulted to give such advice.

7. The expression “patent attorney” shall also include a professional representative before the European Patent Office pursuant to Article 134 (1) EPC.

^{Relation to Agreement: Article 48(4)}

Where a client, or a lawyer or patent attorney as specified in Rule 287.1, .2, .6 and .7 instructed by a client in a professional capacity, communicates confidentially with a third party for the purposes of obtaining information or evidence of any nature for the purpose of or for use in any proceedings, including proceedings before the European Patent Office, such communications shall be privileged from disclosure in the same way and to the same extent as provided for in Rule 287.

^{Relation to Agreement: Article 48(5)}

1. Representatives appearing before the Court shall enjoy immunity in respect of words spoken or written by them concerning the action or the parties.

2. Representatives shall enjoy the following further privileges and facilities: 

(a) papers and documents relating to the proceedings shall be exempt from both search and seizure;

(b) any allegedly infringing product or device relating to the proceedings shall be exempt from both search and seizure when brought to the Court for the purposes of the proceedings.

In the event of a dispute, customs officials or police may seal those papers, documents or allegedly infringing products or devices. They shall then be immediately forwarded to the Court for inspection in the presence of the Registrar and of the person concerned.

3. Representatives shall be entitled to travel in the course of duty without hindrance.

4. The privileges, immunities and facilities specified in paragraphs 1 to 3 are granted exclusively in the interests of the proper conduct of proceedings.

5. The Court may waive the immunity where it considers that a representative is guilty of conduct which is contrary to the proper conduct of proceedings.

^{Relation with Agreement: Article 48} 

1. As regards representatives who appear before it, the Court shall have the powers normally accorded to courts of law, under the conditions laid down in Rule 291.

2. Representatives who appear before the Court shall strictly comply with any code of conduct adopted for such representatives by the Administrative Committee.

1. If the Court considers that the conduct of a party’s representative towards the Court, towards any judge of the Court or towards any member of the staff of the Registry is incompatible with the dignity of the Court or with the requirements of the proper administration of justice, or that such representative uses his rights for purposes other than those for which they were granted, or that such representative is otherwise in breach of any code of conduct adopted pursuant to Rule 290.2 it shall so inform the person concerned. On the same grounds, the Court may at any time, after having given the person concerned an opportunity to be heard, exclude that person from the proceedings by way of order. That order shall have immediate effect.

2. Where a party’s representative is excluded from the proceedings, the proceedings shall be stayed for a period fixed by the presiding judge in order to enable the party concerned to appoint another representative

1. For the purposes of Article 48(4) of the Agreement, the term "patent attorneys" assisting a representative referred to in Article 48(1) and/or (2) of the Agreement shall mean persons meeting the
requirements of Rule 287.6(b) or .7 and practising in a Contracting Member State.

2. Such patent attorneys shall be allowed to speak at hearings of the Court at the discretion of the Court and subject to the representative’s responsibility to coordinate the presentation of a party’s case.

3. Rules 285 and 287 to 291 shall apply mutatis mutandis. 

^{Relation with Agreement: Article 48(4)}

Any change of representative shall take effect from the receipt by the Registry of notification that a new representative shall in future be representing the party concerned. Until the moment where such statement is received, the former representative remains responsible for the conduct of the proceedings and for communications between the Court and the party concerned.

An Application to remove a representative’s name, being a representative qualified pursuant to Article 48(1) of the Agreement, from the register of representatives may be made:

(a) by the representative himself in the event he retires or for any other reason ceases to satisfy the requirements of Rule 286;

(b) by a representative on behalf of a listed representative who has died.

The Court may stay proceedings:

(a) where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly;

(b) where it is seized of an action relating to a supplementary protection certificate which is also the subject of proceedings before a national court or authority;

(c) where an appeal is brought before the Court of Appeal against a decision or order of the Court of First Instance: (i) disposing of the substantive issues in part only; (ii) disposing of an admissibility issue or a Preliminary objection;

(d) at the joint request of the parties;

(e) pursuant to Rule 37;

(f) pursuant to Rules 75 and 76;

(g) pursuant to Rule 118;

(h) pursuant to Rule 136;

(i) pursuant to Rule 266;

(j) pursuant to Rules 310 and 311;

(k) pursuant to Rule 346;

(l) to give effect to Union law, in particular the provisions of Regulation (EU) No 1215/2012 and the Lugano Convention;

(m) in any other case where the proper administration of justice so requires.

1. The stay of proceedings shall take effect on the date indicated in the order to stay or, in the absence of such an indication, on the date of that order. The Court shall stipulate what effect the stay shall have on any existing orders.

2. Where the order to stay does not fix the length of the stay, it shall end on the date indicated in the order to resume proceedings or, in the absence of such indication, on the date of the order to resume. 

3. While proceedings are stayed, time shall cease to run for the purposes of procedural periods. Time shall begin to run afresh for the purposes of procedural periods from the date on which the stay of proceedings comes to an end.

Any decision referred to in Rule 296.2 ordering the resumption of proceedings before the end of the stay shall be made by order of the judge-rapporteur after hearing the parties. The judge-rapporteur may refer the matter to the panel.

The Court may of its own motion or at the request of a party request that opposition proceedings or limitation proceedings (including any subsequent appeal proceedings) before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office. The Court may stay its proceedings in accordance with Rule 295(a) pending the outcome of such request and any subsequent accelerated proceedings. 

Any period of time prescribed by the Agreement, the Statute, these Rules or any order of the Court for the taking of any procedural step shall be laid down in terms of full days, weeks, months or years and shall be reckoned as follows:

(a) computation shall start on the day following the day on which the relevant event occurred; in the case of service of a document, the relevant event shall be the receipt of that document in accordance with Part 5, Chapter 2;

(b) when a period is expressed as one year or a certain number of years, it shall expire in the relevant subsequent year in the month having the same name and on the day having the same number as the month and the day on which the said event occurred. If the relevant subsequent month has no day with the same number, the period shall expire on the last day of that month;

(c) when a period is expressed as one month or a certain number of months, it shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred. If the relevant subsequent month has no day with the same number, the period shall expire on the last day of that month;

(d) when a period is expressed as one week or a certain number of weeks, it shall expire in the relevant subsequent week on the day having the same name as the day on which the said event occurred;

(e) day shall mean a calendar day unless expressed as a working day;

(f) calendar days shall include official holidays of the Contracting Member State in which the division or the seat of the central division or its section concerned or the Court of Appeal is located, Saturdays and Sundays;

(g) working days shall not include official holidays of the Contracting Member State in which the division or the seat of the central division or its section concerned or the Court of Appeal is located, Saturdays and Sundays;

(h) periods shall not be suspended during the judicial vacations.

Commentary

Extension of deadlines:

In UPC_CoA_320/2023, order of 13 October 2023, the Court of Appeal stated in its 2nd and 3rd headnotes that given the purpose of Rule 13.2 RoP, if a claimant did not upload the Annexes simultaneously with the Statement of claim in the CMS, and thus did not comply with Rule 13.2 RoP, and as a consequence these have not been available when the representative of the defendant accessed the CMS with the Access Code contained in the Notice, this in itself is sufficient to constitute a reasoned request by a defendant for an extension of the terms mentioned in Rules 19.1 and 23 RoP for lodging a Preliminary objection and the Statement of defense, regardless of the nature and/or content of the Annexes. Failing any specific circumstances of an individual case which calls for another term, which have to be brought forward by the claimant, the extension of the terms mentioned in Rules 19.1 and 23 shall compensate for and thus be equal to the period during which the Annexes have not been available after service of the Statement of claim contrary to Rule 13.2 RoP.

1. If a period expires on a Saturday, Sunday or official holiday of the Contracting Member State in which the division or the seat of the central division or its section concerned or the Court of Appeal is located, it shall be extended until the end of the first following working day.

2. Paragraph 1 shall apply mutatis mutandis if documents filed in electronic form cannot be received by the Court. 

1. The Court may order that proceedings commenced by a plurality of claimants or in respect of a plurality of patents be heard in separate proceedings.

2. Where the Court orders a separation of proceedings the Court shall decide on the payment of a new court fee or court fees in accordance with Part 6.

3. The Court may order that parallel infringement or revocation proceedings relating to the same patent or patents and before the same local or regional division or the central division or the Court of Appeal be heard together where it is in the interests of justice to do so.

1. Proceedings may be started against a plurality of defendants if the Court has competence in respect of all of them.

2. The Court may separate the proceedings into two or more separate proceedings against different defendants.

3. Where the Court orders a separation of proceedings under paragraph 2, the claimants in the new proceedings shall pay a new court fee in accordance with Part 6, unless the Court decides otherwise.

1. The Court may, on application by a party, order a person to:

(a) be added as a party;

(b) cease to be a party;

(c) be substituted for a party.

2. The Court shall invite other parties to the proceedings to comment on the application, as soon as practicable after service of the application.

3. When ordering that a person shall become a party or shall cease to be a party

1. Where the Court orders that a party be added, removed or substituted under Rule 305.1, it shall give directions to regulate the consequences as to case management.

2. The Court shall also determine the extent to which a new party is bound by the proceedings as then constituted. 

1. If a party dies or ceases to exist during proceedings, the proceedings shall be stayed until such party is replaced by his successor. The Court may specify a period in this respect.

2. If there are more than two parties to the proceedings, the Court may decide that:

(a) proceedings between the remaining parties be continued separately; and

(b) the stay shall only concern the proceedings regarding the party that no longer exists.

3. If the successor of the party that died or ceased to exist does not continue the proceedings of his own motion, within a period specified by the Court, any other party may apply to have the successor added to or substituted for a party.

4. The Court shall decide who shall be added or substituted as a party pursuant to Rule 305 and 306 shall apply mutatis mutandis. 

1. If a party is declared insolvent under the law applicable to the insolvency proceedings the Court shall stay the proceedings up to three months. They may be stayed until the competent national authority or person dealing with the insolvency has decided whether to continue the proceedings or not. Where the competent national authority or person dealing with the insolvency decides not to continue the proceedings, the Court may decide, upon a reasoned request by the other party, that the proceedings should be continued in accordance with the applicable national insolvency law.

2. Proceedings may also be stayed at the request of a temporary administrator who has been appointed before a party is declared insolvent.

3. The claimant may withdraw the action against an insolvent defendant in accordance with Rule 265 and a defendant may withdraw a Counterclaim against an insolvent claimant. Such withdrawal shall not prejudice the action against other parties.

4. If proceedings are continued, the effect of a decision of the Court as regards the insolvent party in the action shall be determined by the law applicable to the insolvency proceedings.

Commentary

Rule 311 RoP provides guidelines for the UPC procedure in case a party is administered before insolvency or declared insolvency. The reference to the respective national insolvency law allows the court to take the specific circumstances of bankruptcy into consideration.

In UPC_CoA_335/2023 (Nanostring Technologies Inc. et.al. vs. 10x Genomics, Inc. et al., Order of 26. February 2024) the Court of Appeal stated that In accordance with the principles of procedural economy and cost efficiency as well as a fair balance between the legitimate interests of the parties, which must be considered in the interpretation of the RoP pursuant to Art. 41.3 UPCA, the proceedings are not required to be stayed under R. 311.1 RoP, if a party is declared insolvent only after the oral proceedings have concluded and the dispute is ready for a decision. At this stage of the proceedings, the parties have already taken all procedural steps, and all costs have already been incurred by the parties. There is no difference on the effect of a decision or order to the bankruptcy estate compared to a decision or order issued before the declaration of bankruptcy. The interest in a timely order weight particularly heavily in proceedings for interim relief. Furthermore, it leads to a fair balance between the legitimate interests of the parties, if events that only occurred after the conclusion of the oral hearing are no longer to be taken into account in the decision-making process.

1. If a patent or patent application is transferred, for one or more Contracting Member States, to another proprietor after proceedings have been started before the Court, the Court may authorise the new proprietor to be added as a party or substituted for a party pursuant to Rule 305 to the extent that the patent and the claims in the proceedings have been assigned to the new proprietor. Rule 306 shall apply mutatis mutandis.

2. If the new proprietor takes over the proceedings, no new court fee shall be payable, even if the new proprietor is represented by a new representative.

3. If the new proprietor chooses not to take over the proceedings, any decision in proceedings that have been recorded in the register shall be binding upon him.

Commentary

In UPC_CFI_145/2024 (Sanofi v. Accord Healthcare, order of 17 January 2025) the Local Division Munic stated that the former patent holder in his function as plaintiff initiating the infringement action and defendant in the revocation action is replaced by the new patent holder after reorganizing the group of companies related to the former patent holder which has been dissolved without liquidation as all the shares came to be held by the new patent holder as single shareholder, which results in the universal transfer of assets including the ownership of the patent in dispute.

1. An Application to intervene may be lodged at any stage of the proceedings before the Court of First Instance or the Court of Appeal by any person establishing a legal interest in the result of an action submitted to the Court (hereinafter “the intervener”).

2. An Application to intervene shall be admissible only if it is made in support, in whole or in part, of a claim, order or remedy sought by one of the parties and is made before the closure of the written procedure unless the Court of First Instance or Court of Appeal orders otherwise.

3. The intervener shall be represented in accordance with Article 48 of the Agreement.

4. The Application to intervene shall contain: 

(a) a reference to the action number of the file;

(b) the names of the intervener and of the intervener’s representative, as well as postal and electronic addresses for service and the names of the persons authorised to accept service;

(c) the claim, order or remedy in support of which intervention is sought by the intervener; and

(d) a statement of the facts establishing the right to intervene under paragraphs 1 and 2.

Commentary

Rule 313 RoP allows any third party having a legal interest in the outcome of the proceedings to become a party by lodging an application to intervene. 

1. Term for Intervention

The request to intervene shall be lodged before closure of the written procedure (Art. 313.2 RoP.

2. Legal Interest

The intervening party must have a direct legal interest. 

In UPC_CoA_404/2023 (Ocado Innovation Ltd. vs. Autostore AS et al., decision of 10. January 2024), it was stated that an interest in the result of the action within the meaning of R.313.1 RoP means a direct and present interest in the grant by the Court of the order or decision as sought by the party, whom the prospective intervener wishes to support and not an interest in relation to the pleas in law put forward. It is necessary to distinguish between prospective interveners establishing a direct interest in the ruling on the specific request sought by the supported party, and those who can establish only an indirect interest in the result of the case by reason of similarities between their situation and that of one of the parties. A similarity between two cases is not sufficient.

A direct legal interest is granted for:

A) Supplyer

In UPC_CFI_33/2024 (Swarco vs. Stabag, procedural order of 30. July 2024), it was stated that a legal interest can in any case be affirmed if it is claimed that the product purchased by the intervener infringes the patent in dispute.

In UPC_CoA_621/2024 (Daedalus Prime LLC vs. Xiaomi Technology Netherlands B.V. and the intervener Mediatek Inc., order of 8. January 2025), it was stated that the fact that the confidential information was submitted by Defendant does not rule out that the intervening manufacturer has a legal interest in maintaining its confidentiality. The supplying manufacturer has a direct and present interest in the result of the appeal proceedings, as the confidential information at issue in the appeal proceedings concerns information relating to the architecture of intervener’s processors.

B) Licensee

In UPC_CFI_363/2023 (Seoul Viosys Co., Ltd. et al. vs. Expert e-Commerce GmbH, procedural order of 22. April 2024), it was stated that the intervener as licensee of the patent in suit has a direct and present interest in the outcome of the proceedings related to a revocation counterclaim. If this counterclaim is successful, the patent in suit will be revoked with retroactive effect pursuant to Art. 65.2 and 65.4 UPCA. As a result, the intervener as licensee loses its preferential position over non-licensees, which is also associated with a simple licence. It can therefore join the legal dispute on the plaintiff's side and attempt to prevent such a declaration of nullity (Bopp/Kircher/Lux, Handbuch Europäischer Patentprozess, 2nd ed., § 11 para. 30; Bopp/Kircher/Burrichter/Kirchhofer, loc. cit., § 14 para. 167).

In this decision, the court further states that such an intervention is not only admissible in isolation in relation to the revocation counterclaim. If the local division has opted for a joint hearing of the infringement and revocation counterclaims (Art. 33.3 lit. a) UPCA), it must decide on both the infringement and the legal validity on the basis of a uniform interpretation of the patent in dispute (UPC_CFI_16/2024 (Ortovox Sportartikel GmbH vs. Mammut Sports Group AG et al., Order of 15 April 2024). Infringement action and nullity counterclaim are therefore closely linked in terms of content. Any change in the interpretation and determination of the scope of protection can directly influence not only the answer to the infringement question, but also the assessment of the validity of the patent in dispute. Against this background, the intervener can only effectively pursue its interest in preventing the invalidation of the patent in suit if it joins not only the nullity action in isolation, but the legal dispute as a whole.

C) Patent pool administrators

In UPC_CFI_153/2024 (NEC Corp. vs. TCL et al. and intervener Access Advanced LLC, substantive order of 2. October 2024), it was stated that a patent pool administrator has, in principle, a legal interest in the outcome of proceedings within the meaning of Rule 313 RoP.

In UPC_CFI_457/2023 (Dolby International AB vs. HP Deutschland GmbH et al. and the intervener Access Advance LLC, procedural order of 16. June 2024), it is stated that the intervener has a sufficient legal interest in the outcome of the dispute if it manages a patent pool to which the plaintiff has contributed the patent in suit. The intervener was entrusted by the plaintiff with the licensing of the standard-essential patent portfolio, which comprehensively covers the patent in dispute, and in this capacity fulfills the plaintiff's FRAND obligations and negotiates the conclusion of a pool license. The administrator of the SEP patent pool therefore has a legal interest in the FRAND objection ultimately raised (also) against it being rejected.

A direct legal interest is rejected for:

D) Party of parallel procedure

In UPC_CoA_404/2023 (Ocado Innovation Ltd. vs. Autostore AS et al., decision of 10. January 2024), it was stated that an interest in the result of the action within the meaning of R.313.1 RoP means a direct and present interest in the grant by the Court of the order or decision as sought by the party, whom the prospective intervener wishes to support and not an interest in relation to the pleas in law put forward. It is necessary to distinguish between prospective interveners establishing a direct interest in the ruling on the specific request sought by the supported party, and those who can establish only an indirect interest in the result of the case by reason of similarities between their situation and that of one of the parties. A similarity between two cases is not sufficient.

In UPC_CFI_698/2024 (Accord Healthcare et al. vs. Novartis AG and intervener Zentiva K.S. et al., procedural order of 27. March 2025), it was stated that a distinction must be made between prospective interveners who have a direct interest in the outcome of the specific form of order sought by the party they are supporting, and those who have only an indirect and parallel interest in the outcome of the case by virtue of factual similarity between their situation and that of one of the parties (see also UPC_CFI_380/2024 (Eoflow Co., Ltd. vs. Insulet Corp., procedural order of 15. February 2025) and in UPC_CFI_153/2024 (NEC vs. TCL and intervener Access Advanced, substantive order of 2. October 2024)).

3. Confidentaility

Confidentiality issues are no reason to reject a legal interest.

In UPC_CFI_153/2024 (NEC Corp. vs. TCL et al. and intervener Access Advanced LLC, substantive order of 2. October 2024), it was stated that admission of the intervention is not precluded by the fact that it does not prevent violation of Article 101 TFEU, since the applicant and a party have the possibility to exchange sensitive information under competition law in their written submissions. Allowing an intervention as such does not constitute a violation of Art. 101 TFEU. By admitting the intervention, the applicant becomes a party to the proceedings and is to be treated as a party in accordance with R. 315(4) RoP. Since it must accept the proceedings at this stage, it must be allowed access to the file to be able to conduct the proceedings properly. If the court has already classified certain information as confidential and granted only limited access to the party on whose side the intervener is joining pursuant to R. 262a RoP, the intervener cannot be granted unlimited access to this information. 

In UPC_CFI_698/2024 (Accord Healthcare B.V. et al. vs. Novartis AG and the intervener Zentiva K.S. et al., procedural order of 21./27. March 2025), it was stated that parallelism between two cases or the allegation that the outcome of a judgment has a direct impact on another does not establish a legal interest to intervention pursuant to R. 313 RoP.

4. Non-contradictory submissions by the intervener

According to R. 313.2 UPCA, an application to intervene shall be admissible only if it is made in support, in whole or in part, of a claim, order or remedy sought by one of the parties and is made before the closure of the written procedure. Therefore, the requests and arguments of the intervener must be in line with the party supported by the intervener.

In UPC_CFI_698/2024 (Accord Healthcare et al. vs. Novartis AG and intervener Zentiva K.S. et al., procedural order of 27. March 2025), it was stated that the expression 'made in support, in whole or in part, of a claim, order or relief sought by one of the parties' in R. 313.2 RoP must be interpreted as meaning that the intervening party's remedies must be non-contradictory to those of the party who has been supported, and therefore in accordance with Art. 67 German ZPO and Art. 105 Italian Code of Procedure, and not in the sense of a partial identity.

The judge-rapporteur shall decide on the admissibility of the Application to intervene by way of order. The other parties shall be given an opportunity to be heard beforehand.

Commentary

The decision on the application to intervene is assigned to the judge-rapporteur alone after the parties have been granted their fundamental right to be heard according to Art. 76 UPCA.

The decision can include an order requesting the intervener for payment of a security of costs according to R. 158 RoP. 

In UPC_CFI_33/2024 (Swarco vs. Strabag, order of 30. July 2024) it was stated that while Art. 69.4 UPCA merely provides for the plaintiff to provide security for the costs of the proceedings, R. 158 RoP extends the group of addressees of such an order to “the parties” and thus also to the intervener, if it is admitted. Despite the intervener's existing legal interest, enforcement of the UPC decision in a foreign country outside EU, here the People's Republic of China, is not possible in the absence of a corresponding enforcement agreement, which also applies to the costs of the proceedings. A request for security for costs, on the grounds that, if successful, the claimant would not be able to recover its costs from the intervener by way of enforcement, can be granted after weighing up the interests including the risk of enforcement.

1. If an Application to intervene is admissible, the judge-rapporteur or the presiding judge shall:

(a) inform the parties to proceedings; and

(b) specify a period within which the intervener may lodge a Statement in intervention.

2. The Registry shall as soon as practicable serve on the intervener any written pleading served by the parties. On a reasoned request by a party the Court may for the protection of confidential information order that a pleading or part of a pleading be disclosed only to certain named persons and subject to appropriate terms of non-disclosure.

3. The Statement in intervention shall contain:

(a) a statement as to the issues involving the intervener and one or more of the parties, and their connection to the matters in dispute;

(b) the arguments of law; and

(c) the facts and evidence relied on.

4. The intervener shall be treated as a party, unless otherwise ordered by the Court.

Commentary

The intervener is treated as a party, receives any written pleadings in the file and has the right to lodge a statement within a given period.

The statements in the intervention shall not be contradictory to the statements of the supported party.

In UPC_CFI_440/2023 (Seoul Viosys Co. Ltd. vs. Laser Components and intervener Photon Wave Co. Ltd, LD Paris order on 06. May 2024), it was stated that the intervener may not develop claims contrary to those of the party it supports and may not independently develop claims and procedural methods distinct from those offered to the party it supports. Consequently, an intervener who has not filed a counterclaim for invalidity within the time limit set for the party it is supporting cannot claim an extension of time to file an independent claim. According to R. 315.4 RoP, "an intervener shall be treated as a party unless the court decides otherwise". As such, the intervener has the rights attaching to party status and participates in the proceedings, subject nevertheless, in accordance with R. 313.2 RoP, to the intervention being "made in whole or in part in support of a claim", which means that the intervener may not develop claims contrary to the party he supports and may not to develop claims independently and in accordance with procedural arrangements that are distinct from those offered to the party it is supporting.

1. The judge-rapporteur or the presiding judge may, of his own motion after hearing the parties, or on a reasoned request from a party, invite any person concerned by the outcome of the dispute to inform the Court, within a period to be specified, whether he wishes to intervene in the proceedings.

2. If the person wishes to intervene, he shall present his Application to intervene within one month of service of the invitation and his Statement in intervention within such further period to be specified by the judge-rapporteur or the presiding judge. Rules 313.3, .4, 314 and 315 shall apply mutatis mutandis.

3. An intervener shall be bound by the decision in the action. 

Commentary

Any third party can be invited to intervene either by the judge-rapporteur, the presiding judge or a reasoned request from a party. The invitation related to third parties concerned by the outcome of the dispute. The invited persons must then show a legal interest according to R. 313.1 RoP.

The effect of the intervention is that the intervener can actively support the case by own submissions, and that the intervener is bound by the UPC decision. Thus, the intervening supplier in a dispute about warranty of sales free of legal defects (e.g. according to Art. 42 CISG or national law) is not able to defend himself with lack of patent infringement, once the UPC ordered in the dispute against the buyer that the supplied goods infringe that patent and that the patent is valid.

1. A party who contends that the person should be bound by the decision in the action even if he refuses to intervene shall give reasons for this contention in its reasoned request. In such a case the invitation must include these reasons and must state that the party making the request contends that the person should be bound by the decision in the action even if that person refuses to intervene.

2. If the person invited to intervene pursuant to Rule 316.1 does not intervene but wishes to contend that he should not be bound by the decision in the action, he shall lodge a statement to that effect within the one month period referred to in Rule 316.2. If no such statement is lodged within the time specified he shall be bound by the decision in the action as between himself and any other party to the action and shall not be entitled to argue that the decision in the action was wrong or that the inviting party did not conduct the proceedings leading to the decision in the action properly. If a statement is lodged within the time specified then the Court shall decide whether the person invited to intervene shall be bound having heard the parties and the person invited to intervene. If the Court so decides, the person invited to intervene may present an Application to intervene within one month of service of the Court’s decision. Rule 316.2 shall apply. If the person invited to intervene fails to present such an application, he shall be bound by the decision in the action. 

There shall be no appeal against an order refusing an Application to intervene.

Commentary

The decision of the judge-rapporteur on the admissibility of the application to intervene according to R. 314 RoP is final and not subject to appeal.

1. Where a party has failed to observe a time-limit set by these Rules or the Court for a cause which, despite all due care having been taken by the party, was outside his control and the non-observance of this time limit has had the direct consequence of causing the party to lose a right or means of redress, the relevant panel of the Court may upon the request of that party re-establish the right or means of redress.

2. The Application for Re-establishment of rights shall be lodged with the Registry within one month of the removal of the cause for non-observance of the time-limit but in any event within six months of the non-observed time-limit. Within that time-limit a fee shall be paid for a Request for Re-establishment of rights, in accordance with Part 6. 

3. The Application shall:

(a) state the grounds on which it is based and shall set out the facts on which it relies; and

(b) contain the evidence relied on in the form of affidavits from all persons involved in the nonobservance of the time-limit and the persons involved in establishing the precautionary measures of due care taken in order to avoid such cases of non-compliance.

4. The omitted act shall be performed or completed together with Application for Re-establishment within the time-limit mentioned in paragraph 2.

5. There shall be no grant of Re-establishment of rights in respect of the non-observance of the time limit mentioned in paragraphs 2 and 4 of this Rule.

6. The panel shall decide on the Application for Re-establishment of rights by way of order. The other parties shall be given an opportunity to be heard beforehand.

7. There shall be no right to appeal from an order rejecting an Application for Re-establishment of rights or from an order granting Re-establishment of rights.

1. At any time during the written procedure, any party may lodge an Application by both parties to use the language in which the patent was granted as language of the proceedings, in accordance with Article 49(3) of the Agreement. The Application shall state that both parties agree to use the language in which the patent was granted as the language of the proceedings.

2. As soon as practicable, the Registry shall forward the Application to the panel. 

3. The panel shall, as soon as practicable, decide whether it approves the Application by both parties to use the language in which the patent was granted as the language of the proceedings. Where the panel does not approve the Application, the Registry shall as soon as practicable inform the parties who may request, within 10 days, that the action be referred to the central division and the action shall be transferred accordingly.

4. Where the action is transferred to the central division Rule 41 shall apply mutatis mutandis. 

^{Relation with Agreement: Article 49(3)}

At any time during the written procedure and the interim procedure, the judge-rapporteur may, of his own motion or on a request by a party, after consulting the panel, propose to the parties that the language of the proceedings be changed to the language in which the patent was granted, in accordance with Article 49(4) of the Agreement. If the parties and panel agree the language of the proceedings shall be changed. 

^{Relation with Agreement: Article 49(4)}

1. If a party wishes to use the language in which the patent was granted as language of the proceedings, in accordance with Article 49(5) of the Agreement, the party shall include such Application in the Statement of Claim, in the case of a claimant, or in the Statement of Defence, in the case of a defendant. The judge-rapporteur shall forward the Application to the President of the Court of First Instance.

2. The President shall invite the other party to indicate, within 10 days, its position on the use of the language in which the patent was granted as language of the proceedings.

3. The President, having consulted the panel of the division, may order that the language in which the patent was granted shall be the language of the proceedings and may make the order conditional on specific translation or interpretation arrangements.

^{Relation with Agreement: Article 49(5)}

An Application under Rule 321.1 or 323.1 shall specify whether existing pleadings and other documents should be translated and at whose cost. If the parties cannot agree the judge-rapporteur or the President of the Court of First Instance, as the case may be, shall decide in accordance with Rule 323.3.

1. During the written procedure and the interim procedure, case management shall be the responsibility of the judge-rapporteur subject to Rules 102 and 333.

2. The judge-rapporteur may refer a proposed order to the panel.

3. After the closure of the interim conference, case management shall be the responsibility of the presiding judge in consultation with the judge-rapporteur.

4. The Registry shall serve any case management orders on the parties as soon as practicable after the decision of the judge-rapporteur, presiding judge or panel.

Active case management includes:

(a) encouraging the parties to co-operate with each other during the proceedings;

(b) identifying the issues at an early stage;

(c) deciding promptly which issues need full investigation and disposing summarily of other issues;

(d) deciding the order in which issues are to be resolved;

(e) encouraging the parties to make use of the Centre and facilitating the use of the Centre;

(f) helping the parties to settle the whole or part of the action;

(g) fixing timetables or otherwise controlling the progress of the action;

(h) considering whether the likely benefits of taking a particular step justify the cost of taking it;

(i) dealing with as many aspects of the action as the Court can on the same occasion;

(j) dealing with the action without the parties needing to attend in person;

(k) making use of available technical means; and

(l) giving directions to ensure that the hearing of the action proceeds quickly and efficiently.

1. Case management decisions or orders made by the judge-rapporteur or the presiding judge shall be reviewed by the panel, on a reasoned Application by a party.

2. An Application for the review of a case management order shall be lodged within 15 days of service of the order. The Application shall set out the grounds for review and the evidence, if any, in support of the grounds. The other party shall be given an opportunity to be heard.

3. The party seeking a review shall pay the fee for the review of a case management order, in accordance with Part 6. Rule 15.2 shall apply mutatis mutandis.

4. The panel shall as soon as practicable decide the Application for review and make any necessary revised case management order.

5. A decision of the panel on an Application for review is a procedural decision for the purposes of Rule 220.2.

Except where the Agreement, the Statute or these Rules provide otherwise, the judge-rapporteur, the presiding judge or the panel may:

(a) extend or shorten the period for compliance with any rule or order [Rule 9.3];

(b) adjourn or bring forward the interim conference or the oral hearing;

(c) communicate with the parties to instruct them about wishes or requirements of the Court;

(d) direct a separate hearing of any issue;

(e) decide the order in which issues are to be decided;

(f) exclude an issue from consideration;

(g) dismiss or decide on a claim after a decision on a preliminary issue makes a decision on further issues irrelevant to the outcome of the action;

(h) dismiss a claim summarily if it has no prospect of succeeding;

(i) consolidate any matter or issue or order them to be heard together;

(j) make any order pursuant to Rules 103 to 109.

The power of the Court to make a case management order includes a power to vary or revoke such order.

The Court may exercise its case management powers on the application by a party or of its own motion, unless otherwise provided.

Where the Court proposes to make an order of its own motion, it may do so but only after hearing the parties.

1. In the interests of the proper administration of justice and of avoiding inconsistent decisions, where more than one action concerning the same patent (whether or not between the same parties) is pending before:

(a) different panels (whether in the same or different divisions); or

(b) different panels of the Court of Appeal, the panels may by agreement, at any time, after hearing the parties, order that two or more actions shall, on account of the connection between them, be heard together. Article 33 of the Agreement shall be respected.

2. The actions may subsequently be disjoined. 

1. With the exception of the President of the Court of Appeal and the President of the Court of First Instance, the judges shall rank in precedence according to their seniority in office.

2. Where there is equal seniority in office, precedence shall be determined by age.

3. Retiring judges who are reappointed shall retain their former precedence.

4. The Presidium may determine the presiding judge of a panel. In the absence of such a determination by the Presidium and unless otherwise agreed by the panel the most senior judge shall be the presiding judge.

1. The duration of judicial vacations shall be fixed by the President of the Court of Appeal, on a proposal from the Presidium. The dates and times of the sittings of the Court shall be decided by the presiding judge of the panel in question. 

2. The Court may choose to hold one or more particular sittings in a place other than that in which it has its seat. Subject to any rules agreed by the relevant Contracting Member States pursuant to Article 7(5) of the Agreement where an action is pending before a regional division the judge-rapporteur or the presiding judge shall designate the place within the region for each hearing having regard to the residence or place of business of the defendant and all other relevant circumstances such as the facilities available, the financial means of the parties and the place of actual or threatened infringement. 

^{Relation with Statute: Article 17}

1. The Court shall deal with the actions before it in the order in which they become ready for hearing in accordance with Rule 108.

2. The presiding judge of a panel may, after hearing the parties [Rule 264]:

(a) direct that a particular action be given priority and that time limits provided for in these Rules be shortened;

(b) defer an action to be dealt with later, in particular with a view to facilitating an amicable settlement of the dispute

1. The Court shall deliberate in closed session.

2. The presiding judge shall preside over the deliberations. Only those judges who were present at the oral hearing may take part in the deliberations on the decision.

3. The deliberation of the Court shall take place as soon as possible after the closure of the oral hearing.

1. The President of the Court of First Instance or a judge to whom he has delegated this task in a division, the seat of the central division or one of its sections shall allocate the judges to the panels of the local and regional divisions, the seat of the central division and its sections.

2. The allocation shall be in conformity with Article 8 of the Agreement.

3. The actions pending in the division, the seat of the central division or one of its sections shall be assigned to the panels by the Registrar following an action-distribution-scheme established by the presiding judge of each local or regional division, the seat of the central division and its sections (being the judge appointed by the Presidium as the presiding judge) for the duration of one calendar year, preferably distributing the actions according to the date of receipt of the actions at the division or section.

4. Each panel may delegate to one or more judges of the panel:

(a) the function of acting as a single judge; or

(b) the function of acting for the panel in the procedures of Part 1 Chapter 4 (Procedure for the Determination of Damages and Compensation, including the procedure for the laying open of books) and Chapter 5 (Procedure for Cost Decisions). These functions may be delegated to the judge-rapporteur who has prepared the action for the oral hearing.

5. The President of the Court of First Instance or a judge to whom he has delegated this task in a division, the seat of the central division or one of its sections shall designate the judges assigned to each division, the seat of the central division and each of its sections as standing judges for urgent actions. The assignment may be limited to certain periods of time.

6. If all parties agree to having the action heard by a single judge, the presiding judge of the panel to which the action is allocated shall assign the action to a legally qualified judge of the panel.

7. Where paragraphs 1 to 6 apply to decisions by the presiding judge of the seat of the central division or one of its sections, the President of the Court of First Instance may of his own motion review that decision.

8. Paragraphs 1 to 6 shall apply mutatis mutandis to the Court of Appeal; the President of the Court of Appeal exercising the respective functions. 

^{Relation with Statute: Article 19}

1. A party who believes to have reason to object to a judge taking part in proceedings pursuant to Article 7(4) of the Statute shall as soon as is reasonably practicable in the circumstances notify the President of the Court of First Instance or the President of the Court of Appeal wherever the case is pending that it objects to the judge taking part in the proceedings.

2. Any failure to notify an objection as soon as is reasonably practicable shall amount to a waiver of such objection.

3. The President concerned shall, after hearing the judge involved, decide whether the objection is valid pursuant to Article 7(2) and (4) of the Statute and considering the circumstances.

4. In case of any difficulty within the meaning of Article 7(5) of the Statute the President concerned shall refer the matter to the Presidium.

5. If it is decided that the objection is valid the judge concerned shall be replaced on the panel of judges allocated to the case concerned.

6. The panel assigned to the proceedings may decide to continue with the proceedings or to stay the proceedings pending the final decision of the President concerned or the Presidium. The President concerned or the Presidium may give instructions in the final decision as to the future conduct of the proceedings.

^{Relation with Statute: Article 7}

1. Any decision shall contain:

(a) the statement that it is a decision of the Court;

(b) the date of its delivery;

(c) the names of the presiding judge, the judge-rapporteur and other judges taking part in it;

(d) the names of the parties and of the parties’ representatives;

(e) an indication of the claim, order or remedy sought by the parties;

(f) a summary of the facts; and

(g) the grounds for the decision.

2. The order of the Court consequential upon the decision (other than costs) including any order giving immediate effect to an injunction, shall be appended to the decision. The order shall comply with Rule 351.

3. Any dissenting opinion shall be attached to the Court’s decision.

4. The decision of the Court of First Instance shall contain a summary of the requests and facts submitted by the parties and a statement of the facts and arguments on which the Court bases its decision.

5. All decisions shall be recorded in the register.

^{Relation with Statute: Article 35(4)} 

Commentary

This rule relates to Art. 35.4 UPC Statutes.

The decision is a judgment in the meaning of Art. 2 lit. a) Brussels I Recast Regulation 1215/2012 and enforceable according to Art. 82 UPCA.

1. Every order shall contain:

(a) the statement that it is an order of the judge-rapporteur, of the standing judge, of the single judge, of the presiding judge, of a President of the Court or of the Court;

(b) the date of its adoption;

(c) the names of any judge taking part in its adoption;

(d) the names of the parties and of the parties’ representatives; and

(e) the operative part of the order.

2. Where, in accordance with these Rules the Court grants leave to appeal an order the order shall in addition contain:

(a) a statement of the forms of order sought by the parties;

(b) a summary of the facts; and

(c) the grounds for the order.

3. All orders shall be recorded in the register. 

Commentary

The order is a judgment in the meaning of Art. 2 lit. a) Brussels I Recast Regulation 1215/2012 and enforceable according to Art. 82 UPCA.

1. Decisions and orders may be subject to the rendering of a security (whether by deposit or bank guarantee or otherwise) by a party to the other party for legal costs and other expenses and compensation for any damage incurred or likely to be incurred by the other party if the decisions and orders are enforced and subsequently revoked.

2. The Court may upon the application of a party release a security by order.

Commentary

This rule is related to the right for security to safeguard reimbursement of costs and damages caused by preliminary enforcement of judgements which are later revoked. 

1. Order of Security when issuing the decision or order

In UPC_CoA_549/2024  (Koninklijke Philips N.V. vs. Belkin Ltd. Et al., order of 29. October 2024), the Court of Appeal stated that according to R. 352 RoP, a decision or order may be made contingent upon one party providing security to the other party. However, such security must be ordered when the decision or order is issued. This follows from the wording of R. 352.1 RoP, according to which a decision or order may be “made contingent” and from its systematic position in Chapter 10 (“Decisions and Orders”).

2. Reasons for Security

In UPC_CoA_382/2024 (Abbott Diabetess Care Inc. vs. Sibio Technology Ltd. et al., order of 14. February 2025), the Court of Appeal stated in no. 170, that a request for security for enforcement shall be rejected in case that no grounds have been substantiated why serious difficulties would be expected in connection with the recovery of any possible damages. The hypothesis that a defendant might have to file for bankruptcy if the injunction is issued without such a security requires substantiation.

3. Release of Security

In UPC_CoA_844/2024 (Network System Technologies LLC vs. Audi AG, order of 19. February 2025), the Court of Appeal stated that R. 352.2 RoP applies to security for enforcement but should be applied by way of analogy in the case of withdrawal of the infringement action in which the security was ordered.

In UPC 252/2023 (NanoString Technologies Europe Ltd. vs. President and Fellows of Harvard College, order of 17. October 2024), it was stated that under R. 352.2 RoP, the Court has the discretion to release the security but does not have this power of its own motion. An application of a party is required, which implies that the party applying for releasing the security has the burden of substantiation and proof as to why the Court should use its discretionary power to release the security. The Court must weigh the interests of the parties considering the relevant facts and circumstances. The RoP does not specify the circumstances or conditions under which the Court should release security. A security should be released when the reasons for imposing the security have ceased to exist, e.g. when a final and non-appealable judgement has removed the possibility of the event for which security was ordered (i.e. there is no longer a potential liability for legal cost). A further reason to release the security can be if the facts and circumstances that led to imposing the security order have materially changed so that the balance of interests is in favor of releasing a security.

In UPC_CFI_16/2024 (Ortovox Sportartikel GmbH vs. Mammut Sports Group AG et al., order of 5. August 2024), it was stated that security in the form of a surety bond must cover possible enforcement damages in accordance with R. 211.5 sentence 1 of the Implementing Regulation in conjunction with R. 213.2 of the Implementing Regulation and reference to R. 354.2 of the Implementing Regulation. In accordance with R. 45 Registry Rules, this is checked by the UPC Registry as a condition of validity. If the court grants the applicant a right to choose between a deposit and a bank guarantee with regard to the type of security to be provided and if the applicant also provides a bank guarantee following the deposit, the resulting double security can be the reason and cause for a corresponding decision to release the deposit.

The Court may, by way of order, of its own motion or on application by a party made within one month of service of the decision or order to be rectified, after hearing the parties, rectify clerical mistakes, errors in calculation and obvious slips in the decision or order.

Commentary

1. The correctness of a decision is assessed based on the entire content of the decision and other decisions of the case.

In UPC_CFI_582/2024 (Yealink v. Barco, final order of 8 May 2025) the Local Division Brussels stated that a decision/order of the Court should be read and interpreted as a whole, the motivational part of the decision/order (grounds) being as much a part of the decision/order as its substantive part (decision). 

In UPC_CoA_218/2024 (Volkswagen v NST, order of 27 September 2024) the Appeal Court stated that it suffices that information as meant in R.158.4 RoP is provided by a separate order. It does not follow from R.158.4 RoP that this information must necessarily be given in the order itself. Otherwise, the party must request that the information be included in the order itself.

2. Omission can be corrected only if the statement is incorrect or incomplete of the actually intended statement. 

In UPC_CFI_177/2023 (myStromer/Revolt Zycling, Order of 30 June 2023) the Local Division Düsseldorf stated that pursuant to R. 353 RoP, the court may, by order and after hearing the parties, correct clerical and calculation errors as well as obvious inaccuracies in the decision or order. The latter includes all incorrect or incomplete statements of the court's actual intention in the order or decision. The statement of the court's intention in the decision or order must differ from the intention formed during the decision-making process.

In UPC_CFI_368/2024 (Valeo Electrification v. Magna, order of 20 November 2024) the Local Division Düsseldorf stated that the wording of R. 353 RoP, which speaks only “of clerical mistakes, errors in calculation and obvious slips”. There is no mention of omission. Nor is it an incomplete statement as mentioned in the Court´s definition of what an obvious slip can cover.

In UPC_CFI_15/2023 (Edwards Lifesciences Corp. v. Meril, order of 17 February 2025) the Local Division Munich stated that besides clear factual errors “obvious slips” can be rectified. “Obvious slips” within the meaning of R. 353 RoP are all incorrect or incomplete statements of what the Court actually intended in the order or decision. The correction must be attached to the original and become an integral part of the decision. The original version of the decision on the UPC's webpage must be amended.

3. Intended deletions in the redacted version is no reason for correcting the decision.

In UPC_CFI_336/2024 (Maxeon Solar Pte. Ltd. v. Aiko Energy et al., order of 21 January 2025) the Local Division Düsseldorf stated that there is no room for rectification in the case where the unredacted version contains the information requested for adding and where this information is only in the redacted version deleted or replaced by another information.

4. A request for correcting orders in related procedures of the same case, in particular invalidation action and counterclaim for revocation, can be made twice for each action number.

In UPC_CFI_501/2024 (Edwards Lifesciences Corp. v. Meril, order of 3 June 2025) the Local Division Mannheim accepted the filing of two identical requests for the infringement action and the counterclaim for revocation caused by technical reasons and the intention to avoid any ambiguities. When filing a request for rectification under R. 353 RoP via the CMS, the CMS asks a party (1) to link the request to a specific action number and (2) to provide an order number (if applicable). Since the party asked for the rectification of obvious errors relating to both, the infringement action and the counterclaim for revocation, the party filed the request for rectification twice, once linked to the infringement action by indicating the related action number and the related order number and once linked to the counterclaim by indicating the separate action number and the related order number in order to comply with the formal requirements of the CMS. Furthermore, the double request was intended to make it clear that the request relates to both "parts" of the decision.

1. Subject to Rule 118.8 and 352 decisions and orders of the Court shall be directly enforceable from their date of service in each Contracting Member State. Enforcement shall take place in accordance with the enforcement procedures and conditions governed by the law of the particular Contracting Member State where enforcement takes place.

2. Where during an action an enforceable decision or order of the Court is subsequently varied or revoked, the Court may order the party which has enforced such decision or order, upon the request of the party against whom the decision or order has been enforced, to provide appropriate compensation for any injury caused by the enforcement. Rule 125 shall apply mutatis mutandis. Where an enforceable decision or order has been made pursuant to a finding of infringement of a patent and, following the conclusion of the action, the patent is amended or revoked, the Court may order, upon the request of the party against whom the decision or order would be enforceable, that the decision or order ceases to be enforceable.

3. The Court’s decisions and orders may provide for periodic penalty payments payable to the Court in the event that a party fails to comply with the terms of the order or an earlier order. The value of such payments shall be set by the Court having regard to the importance of the order in question.

4. If it is alleged that a party has failed to comply with the terms of the order of the Court, the first instance panel of the division in question may decide on penalty payments provided for in the order upon the request of the other party or of its own motion. The procedure foreseen in Rule 264 shall apply. After having heard both parties the Court may make an appropriate order which may be subject to an appeal pursuant to Rule 220.2.

^{Relation with Agreement: Article 82} 

Commentary

Rule 354 RoP is related to Art. 82 UPCA.

1. Date of Service as starting point for enforcement

It specifies in R. 354.1 RoP that beginning from the date of service a judgement is enforceable.

2. Enforcement without prior notice

In UPC_CFI_2/2023 (NanoString Technologies Inc.  et al. vs. 10x Genomics, Inc., order of 5. December 2023) it was stated that judgments are immediately enforceable without further court enforcement order or threat thereof (for enforcement (see also Local Chamber Düsseldorf, UPC_CFI_177/2023 (myStromer AG vs. Revolt Zycling AG, order of 18. October 2023). Orders are effective and enforceable immediately. In view of this, there was no need for the applicants to give prior notice of their “actual intention to enforce.”

3. Compensation for any injury caused by enforcement

R. 354 .2 RoP gives legal grounds for damages caused by enforcement of a judgement. The court is not entitled to grant compensation without a request of a party. 

4. Panalty Payment

Penalty payments to the courts are established by R. 354.3 and 354.4 RoP in case a party fails to comply with the terms of an order.

In UPC_CFI_181/2023 (KraussMaffei Extrusion GmbH vs. TROESTER GmbH & Co. KG, order of 27. December 2023), it was stated that the amount of a penalty payment is limited to the requested amount. According to Art. 76.1 UPCA, the court may not award more than what has been requested.

In UPC_CFI_177/2023 (myStromer AG vs. Revolt Zycling AG, order of 18. October 2023), it was stated that pursuant to Art. 82.4 sentence 2 UPCA, the penalty payment must be proportionate to the significance of the order to be enforced. Correspondingly, the amount of the penalty payment to be paid to the court in the event of a violation must be determined in accordance with R. 354.4 RoP with regard to the significance of the order in question. The decisive criterion for determining the amount of the penalty payment is therefore the significance of the order and thus ultimately the creditor's interest in its enforcement, which may consist, for example, in marketing the patented products (BeckOK PatR/Augenstein, UPCA, 29th edition, as of July 15, 2023, Art. 82 margin no. 41). The penalty payment is intended to reliably deter the debtor from future infringements and violations and therefore primarily has a coercive function. As clarified by both the English (“penalty payment”; “be sanctioned”) and French (“sanctionnée”) versions of Art. 82.4 UPCA make clear, however, the penalty payment is also a penalty similar to a criminal sanction for the violation of the court order, which is why the imposition of penalty payments as an unwritten element of the offense also requires fault on the part of the debtor. This dual purpose of the penalty payment requires that the penalty payment be assessed primarily with regard to the debtor and its conduct. Particular consideration must be given to the nature, scope, and duration of the infringement, the degree of fault, the advantage gained by the infringer from the infringing act, and the danger posed by the infringing acts committed and possible future infringing acts to the injured party. The more frequently and intensively the debtor has violated the injunction imposed on him, the more clearly he has expressed his unwillingness to comply with the injunction. This must be taken into account when calculating the penalty payment. If the debtor has already violated the cease-and-desist order several times in the past, the pressure required to compel him to comply with the order in the future increases. If, on the other hand, the debtor has already demonstrated in the past its willingness to comply with the injunction, this may reduce the pressure required and thus the penalty payment necessary to compel the debtor to comply with the injunction in the future. When assessing the severity of the violation, the debtor's overall behavior must therefore be taken into account. In particular, the nature, scope, and duration of the violation, the degree of fault, and the danger of the committed and possible future infringements for the creditor must be considered.

UPC_CFI_2/2023 (NanoString Technologies Inc. et al. vs. 10x Genomics, Inc., order of 5. December 2023) confirmed this basic principle for determining the value of penalty.

In UPC_CoA_845/2024 (Order of the Court of Appeal Belkin v. Philips of 30 May 2025) it is stated, that according to R. 354.3 RoP, the Court’s decisions and orders may provide for periodic penalty payments payable to the Court in the event that a party fails to comply with the terms of the order or an earlier order. The value of such payments shall be set by the Court having regard to the importance of the order in question, wherein the Court has the discretion to provided a penalty payment of up to a certain amount -in the aforementioned case  up to € 50,000- for each day of non-compliance. The fact that only a maximum amount – rather than a specific amount – was provided does not give rise to concerns. The amount of the penalty payment to be imposed does not solely depend on the importance of the order that is reinforced with a penalty (cf. Art. 82(4) UPCA, R. 354 RoP). Rather, after a breach has occurred, the Court must, in exercising its discretion, determine the amount of the penalty payment in a manner that is adapted to the circumstances and proportionate to the breach of the order. Relevant factors in this regard include, among others, aspects such as the severity of the established breach, its duration, and the defendant's ability to pay. The appropriate amount of the penalty payment can therefore only be reliably determined once the nature and extent of the breach of the order have been established.

1. Upon request a decision by default may be given against a party where:

(a) the Rules of Procedure so provide if a party fails to take a step within the time limit foreseen in these Rules or set by the Court; or

(b) without prejudice to Rules 116 and 117, the party which was duly summoned fails to appear at an oral hearing.

2. A decision by default against the defendant of the claim or counterclaim may only be given where the facts put forward by the claimant justify the remedy sought and the procedural conduct of the defendant does not preclude to give such decision.

3. A decision by default against the defendant of the claim or counterclaim may only be given where the time limits for the defence to the claim or counterclaim have expired and thus, it is established that the service of the claim or counterclaim was effected in sufficient time to enable the defendant to enter a defence.

4. A decision by default shall be enforceable. The Court may, however:

(a) grant a stay of enforcement until it has given its decision on any Application under Rule 356; or

(b) make enforcement subject to the provision of security; this security shall be released if no Application is made or if the Application fails.

1. A party against whom a decision by default has been given may lodge an Application to set aside that decision within one month of service of the decision.

2. The Application to set aside a decision by default shall contain the party’s explanation for the default. It shall mention the date and number of the decision by default. The party shall pay a fee for the Application to set aside the decision by default, in accordance with Part 6. In the case of Rule 355.1(a) the Application shall be accompanied by the step the party has failed to take.

3. If the provisions of paragraph 2 are met the Application shall be allowed unless a party has been put on notice in an earlier decision that a further decision by default shall be final. If the Application is allowed, a note of allowance shall be included in any publication of the decision by default.

^{Relation with Statute: Article 37}

1. Rules 355 and 356 shall apply mutatis mutandis, in particular where a respondent on whom a Statement of appeal and a Statement of the grounds of appeal have been duly served fails to lodge a Statement of response or where a party fails to file a Reply to a Statement of Cross-Appeal or translations ordered by the judge-rapporteur.

2. When considering whether to give a decision by default, the Court of Appeal may consider the merits of the appeal.

3. Rules 355 and 356 shall apply mutatis mutandis where the appellant fails to correct the deficiencies or to pay the fee pursuant to Rule 229.4 or to lodge the translations pursuant to Rule 232.1 within the period specified.

If the Court finds that an action has become devoid of purpose and that there is no longer any need to adjudicate on it, it may at any time, on the application of a party or of its own motion, after giving the parties an opportunity to be heard, dispose of the action by way of order.

Commentary

In UPC_CFI_249/2023 (Meril GmbH v. Edwards Lifesciences Corporation, order of 19 December 2023, the Local Division Munich found that Rule 360 RoP (Termination of the main proceedings) shall apply mutatis mutandis to applications for provisional measures.

In UPC_CFI_372/2023 (Stäubli Tec-Systems v. Respondent, order of 16 May 2024) the Central Division Paris stated that the obligation to decide on the merits of the costs is regulated in R. 118.5 RoP for the main proceedings. There is no corresponding provision for the settlement of the main issue within the meaning of R. 360 RoP. Therefore, R. 118.5 RoP applies accordingly in this respect. Since there is no unintended gap in the provision governing actions for annulment, analogous application of R. 61.1 RoP, which generally requires a warning letter as a prerequisite for negative declaratory relief, is not applicable. R. 61.1 RoP refers to an action for a declaration of non-infringement and establishes substantive admissibility requirements.

Where it is clear that the Court has no jurisdiction to take cognisance of an action or of certain of the claims therein or where the action or defence is, in whole or in part, manifestly inadmissible or manifestly lacking any foundation in law, the Court may, after giving the parties an opportunity to be heard, give a decision by way of order.

The Court may at any time, on the application of a party or of its own motion, after giving the parties an opportunity to be heard, decide that there exists an absolute bar to proceeding with an action, for example because of the application of the principle of res judicata. 

1. Orders under Rules 360, 361 and 362 shall be taken by the panel upon the recommendation of the judge-rapporteur.

2. Where the decision is taken by the Court of First Instance pursuant to Rules 360, 361 and 362 it is a final decision within the meaning of Rule 220.1(a). 

1. Where the parties have concluded their action by way of settlement, they shall inform the judgerapporteur. The Court shall confirm the settlement by decision of the Court [Rule 11.2], if requested by the parties, and the decision may be enforced as a final decision of the Court.

2. At the request of the parties the Court may order that details of the settlement are confidential.

3. Subject to paragraph 2 the decision of the Court under paragraph 1 shall be entered on the register.

4. The judge-rapporteur shall give a decision as to costs in accordance with the terms of the settlement or, failing that, at his discretion.

^{Relation with Agreement: Article 79}

1. Court fees provided for in these Rules shall be paid in accordance with the provisions contained in this Part and the table of fees adopted by the Administrative Committee pursuant to Article 36 (3) of the Agreement (hereinafter: table of fees).

2. A fixed fee shall be paid in accordance with Section I (fixed fees) of the table of fees for the following actions at the Court of First Instance:

(a) Infringement action [Rule 15],

(b) Counterclaim for infringement [Rule 53],

(c) Action for declaration of non-infringement [Rule 70],

(d) Action for compensation for licence of right [Rule 80.3],

(e) Application to determine damages [Rule 132].

3. In addition to the fixed fee a value-based fee shall be paid in accordance with Section II (value-based fees) of the table of fees for those actions at the Court of First Instance set out in
paragraph 2, which exceed a value of 500,000 EUR.

4. For the following procedures and actions at the Court of First Instance a fee shall be paid in accordance with Section III (other procedures and actions) of the table of fees adopted by the Administrative Committee:

(a) Revocation action [Rule 46],

(b) Counterclaim for revocation [Rule 26],

(c) Application for provisional measures [Rule 206.5],

(d) Action against a decision of the European Patent Office [Rule 88.3, 97.2],

(e) Application to preserve evidence [Rule 192.5],

(f) Application for an order for inspection [Rule199.2],

(g) Application for an order to freeze assets [Rule 200.2],

(h) Filing a protective letter [Rule 207.3],

(i) Application to prolong the period of a protective letter to be kept on the register [Rule.207.9],

(j) Application for rehearing [Rule 250],

(k) Application for re-establishment of rights [Rule 320.2],

(l) Application to review a case management order [Rule 333.3],

(m) Application to set aside decision by default [Rule 356.2].

5. For the following procedures at the Court of Appeal a fixed fee and, where applicable, a value based fee shall be paid in accordance with Section IV. of the table of fees:

(a) Appeal pursuant to Rule 220.1 (a) and (b) [Rule 228],

(b) Interlocutory appeal pursuant to Rule 220.1(c), appeal with leave of the Court of First Instance pursuant to Rule 220.2 or allowance by the Court of Appeal pursuant to Rule 220.4 or appeal of a cost decision with leave of the Court of Appeal pursuant to Rule 221.4 [Rule 228],

(c) Application for leave to appeal against cost decision pursuant to Rule 221 [Rule 228],

(d) Request for discretionary review pursuant to Rule 220.3, [Rule 228],

(e) Application for re-establishment of rights [Rule 320.2],

(f) Application to review a case management order pursuant to Rule 220.2 [R. 333.3],

(g) Application to set aside decision by default pursuant to Rule 357 [Rule 356.2],

(h) Application for rehearing pursuant to Rule 245.2 [Rule 250].

6. The assessment of the value of the relevant action in paragraphs 3 and 5 shall reflect the objective interest pursued by the filing party at the time of filing the action. In deciding on the value, the Court may in particular take into account the guidelines laid down in a decision of the Administrative Committee for this purpose.

7. If an action has more than one claimant and/or more than one defendant or if an action concerns a plurality of patents only one fixed fee and, if applicable, one value-based fee shall apply.

8. Small enterprises and micro-enterprises are required to pay only 60 % of the fees provided for in paragraphs 2 to 5 above (hereinafter: regular fees) subject to the following:

(a) In the Statement of claim or Counterclaim or in the application for a procedure or an appeal the party shall lodge with the Registry a notification in an electronic form in the language of the proceedings. In this notification the party shall provide an affirmation that he fulfils either the criteria of a “small enterprise” or a “micro-enterprise” as defined in Title I of the Annex to the Recommendation of the European Commission n° 2003/361 of 6 May 2003.

(b) If the requirements referred to above have not been met Rule 16.3 to .5 shall apply mutatis mutandis.

(c) The Court may, of its own motion, order the party to supply further documentation including any document relating to that party’s financial resources. The application shall be dealt with by the Court as soon as practicable.

(d) The Court may, at any time, of its own motion, and after having heard the party order payment of (i) the remainder of the regular fee, in the event that payment of 60 % of the regular fees is manifestly disproportionate and unreasonable having regard to the financial capacity of the party; (ii) the remainder of the regular fee plus an additional 50 % of that regular fee, if the affirmation provided by the party is found to be wholly or partially incorrect. An order for the payment of an additional fee pursuant to (i) and (ii) above shall state the reasons for such order.

(e) If the additional fee is not paid within the time limit set by the Court, a decision by default against the party shall be given by the Court pursuant to Rule 355.

9. Fixed and value-based fees may be reimbursed as follows: 

(a) If the action is heard by a single judge [Rule 345.6.] the party liable for the Court fee will be reimbursed by 25 % of the fee.

(b) In case of the withdrawal of an action [Rule 265] the party liable for the Court fees will be reimbursed by: (i) 60 % if the action is withdrawn before the closure of the written procedure (ii) 40 % if the action is withdrawn before the closure of the interim procedure (iii) 20 % if the action is withdrawn before the closure of the oral procedure

(c) If the parties have concluded their action by way of settlement the party liable for the Court fees will be reimbursed by: (i) 60 % if the action is settled before the closure of the written procedure (ii) 40 % if the action is settled before the closure of the interim procedure (iii) 20 % if the action is settled before the closure of the oral procedure

(d) Only one of the reimbursements referred to in paragraph 9 (a), (b) and (c) will apply per action and party. Where more than one reimbursement is applicable, the larger will be applied for each party.

(e) In exceptional cases, having regard, in particular, to the stage of the proceedings and the procedural behaviour of the party, the Court may deny or decrease the reimbursement payable according to paragraph 9 (b) and (c) of the aforementioned provisions.

10. If the amount of Court fees threatens the economic existence of a party who is not a natural person, and has presented reasonably available and plausible evidence to support that the amount of Court fees threatens its economic existence, the Court may upon request by that party, wholly or partially reimburse the fixed and value-based fee. In reaching a decision the Court shall reflect on all circumstances of the case including the procedural behaviour of the party. Before making such a decision the Court may give the other party an opportunity to be heard.

11. The party seeking reimbursement under paragraphs 9 and 10 shall lodge a reasoned Application for reimbursement to the Court. The Court shall deal with the application without delay and if satisfied that the reimbursement is appropriate shall direct the Registrar to make the payment as soon as practicable.

1. The fixed fees provided for in Section I and Section IV of the table of fees and fees for other procedures and actions provided for in Section III of the table of fees shall be paid at the time of lodging the relevant pleading or application. The payment shall be made to one of the bank accounts indicated by the Court and it shall indicate the paying party or its representative together with the number of the patent involved and the number of the case.

2. Proof of payment shall be provided together with the relevant pleading or application.

3. In cases of urgency, where a payment in advance is not possible, the representative of the party in question shall pay the fixed fee within the period set by the Court and the Court may order that the relevant pleading or application shall be deemed lodged and effective when received by the Registry if payment of the fixed fee is made within such period.

4. The value-based fee provided for in Section II of the table of fees shall be paid according to the claimant’s assessment of the value at the time of lodging the relevant pleading or application. In the event that a higher value is determined by the judge-rapporteur the remaining fees due shall be paid within 10 days of service of the order determining the value of the action in accordance with the Rules 22, 60, 74, and 133. Where the value is lower, the Court will reimburse overpaid fees.

5. Where an Application for legal aid has been lodged in accordance with Rule 377, the rules on the obligation as to the time when to pay the fees under paragraph 1 shall not apply.

^{Relation with Agreement: Article 70} 

1. In order to ensure effective access to justice, the Court may grant legal aid to a party (hereinafter “the applicant”).

2. Legal aid may be granted in respect of any proceedings before the Court

1. Subject to Article 71(3) of the Agreement, legal aid may cover, in whole or in part, the following costs:

(a) court fees;

(b) costs of legal assistance and representation regarding: (i) pre-litigation advice with a view to reaching a settlement prior to commencing legal proceedings; (ii) commencing and maintaining proceedings before the Court; (iii) all costs relating to proceedings including the application for legal aid; (iv) enforcement of decisions;

(c) other necessary costs related to the proceedings to be borne by a party, including costs of witnesses, experts, interpreters and translators and necessary travel, accommodation and subsistence costs of the applicant and his representative.

2. Subject to Article 71(3) of the Agreement, legal aid may also cover the costs awarded to the successful party, in the event that the applicant loses the action. 

1. For the costs of representation pursuant to Rule 376.1(b) the maximum level of legal aid that may be granted by the Court shall be the maximum amount of recoverable costs laid down in the decision of the Administrative Committee pursuant to Article 69(1) of the Agreement and Rule 152.2.

2. The Administrative Committee may define thresholds below the level set in paragraph 1 for the maximum level of legal aid for representation pursuant to Rule 376.1(b), taking into account necessary costs for legal representation in the Contracting Member States and the need to guarantee adequate access to justice. 

1. The applicant shall be entitled to apply for legal aid where:

(a) owing to his economic situation, he is wholly or partly unable to meet the costs referred to in Rule 376; and

(b) the action in respect of which the application for legal aid is made has a reasonable prospect of success, considering the applicant’s procedural position; and

(c) the claimant applying for legal aid is entitled to bring actions under Article 47 of the Agreement. 

2. The Administrative Committee may define thresholds above which legal aid applicants are deemed wholly or partly able to bear the costs of proceedings set out in Rule 376. These thresholds may not prevent applicants whose economic situation is above the thresholds from being granted legal aid if they prove that they are in fact unable to pay the costs of the proceedings referred to in Rule 376 as a result of the high level of the cost of living in the Contracting Member State of domicile or habitual residence.

3. When deciding on the grant of legal aid the Court shall, without prejudice to paragraph 1(a), consider all relevant circumstances including the importance of the action to the applicant and also the nature of the action when the application concerns a claim arising directly out of the applicant’s trade or selfemployed profession.

1. When assessing a party’s financial situation, his income and assets must be taken into account.

2. Income shall include all earnings in money or equivalent value after deducting all costs required by the applicant and dependent persons in order to cover their reasonable living expenses (disposable income).

3. The Administrative Committee shall define the deductions from income and assets to be taken into account when assessing the applicant’s financial situation. It shall also define levels of monthly instalments to be paid by the applicant. All thresholds set by the Administrative Committee shall be adapted regularly to price and income indices. 

1. An application for legal aid may be lodged before or after proceedings have been started before the Court.

2. The Application for legal aid shall contain in a language of a Contracting Member State:

(a) the name of the applicant;

(b) postal and electronic addresses for service on the applicant and the names of the persons authorised to accept service;

(c) the name of the other party as well as postal and electronic addresses for service on the other party where available and the names of the persons authorised to accept service, if known;

(d) the action number of the action in respect of which the application is made or, where the application is lodged before the action has been brought, a brief description of the action;

(e) an indication of the value of the action and the costs to be covered by legal aid; 

(f) where legal aid is requested for costs of legal assistance and representation, the name of the proposed representative;

(g) an indication of the applicant’s financial resources, such as income, assets and capital, and of the applicant’s family situation including an assessment of the resources of persons who are financially dependent on the applicant;

(h) where appropriate, a reasoned request for suspension of a time limit which would otherwise need to be observed until the date of notification of the order deciding on legal aid.

3. The application for legal aid must be supported by:

(a) evidence of the applicant’s need for assistance, such as certificates attesting his income, assets and capital and family situation; and

(b) where the application is lodged before the action has been brought, an indication of the evidence in support of the action.

4. In the event of an appeal, a new application shall be lodged.

5. Rule 8 shall not apply.

1. To be admissible, the application must contain a statement of the facts and legal situation, with specific mention of the evidence to be presented. The application must also contain a statement regarding the economic and financial situation of the applicant. The following documents shall be attached to the application:

(a) latest property and income declarations of the applicant;

(b) a document showing the personal monthly income for the previous year, or a declaration of unemployment delivered by the competent authorities, or a certificate proving that the applicant is receiving aid or financial support under a social welfare scheme;

(c) a certificate of composition of household;

(d) any other official document that can provide proof of the financial situation of the applicant.

2. Where appropriate, a certificate relating to the income of other members of the household of the applicant should also be attached to the application. The official documents shall not be older than 3 months. At the request of the Court, the applicant shall produce further documentation and, if so requested, an affidavit of the truthfulness of his statements, otherwise the application will not be admissible.

1. The Registry shall examine the formal admissibility of the application for legal aid and the conditions regarding the financial situation of the applicant pursuant to Rules 377.1(a), .2 and 377A. 

2. If the requirements referred to in Rules 377.1(a), .2, 377A, 378 and 378A have not been met, the applicant shall, as soon as practicable, be invited to correct the deficiencies within 14 days.

3. If the requirements referred to in Rules 377.1(a), .2, 377A, 378 and 378A have been met or the applicant fails to correct a deficiency, the decision on such application shall be taken, by way of order, by the judge-rapporteur or, where the application is lodged before the action has been brought, by the standing judge.

4. Before making a decision on an application for legal aid, the Court shall invite the other party to submit written observations unless it is already apparent from the information submitted that the conditions referred to in Rule 377.1(b) have not been met. Documents regarding the economic and financial situation of the applicant shall be made accessible to the other party only where the applicant has consented or the applicant’s refusal of consent is unreasonable or in the view of the Court the other party has a right to information on the economic or financial situation of the applicant.

5. An order refusing legal aid shall state the reasons on which it is based. 

6. An order granting legal aid may provide for:

(a) an exemption, wholly or partly, from Court fees;

(b) an interim amount to be paid to enable the applicant and/or the representative of the applicant to meet any request of the judge-rapporteur or standing judge prior to making a final order;

(c) an amount to be paid to the representative of the applicant or a limit which the representative’s disbursements and fees may not exceed;

(d) a contribution to be made by the applicant to the costs referred to in Rule 376.1(c).

7. Legal aid may be granted only for the period from receipt of the application with the Court.

8. Where the legal aid covers, in whole or in part, the costs of legal assistance and representation the order granting legal aid shall designate the representative of the applicant.

9. On a request by the designated representative, the Court may order that an amount shall be paid by way of advance.

10. Where requested by the applicant in accordance with Rule 378.2(h), the Court shall decide on the suspension of any time limit.

The applicant shall inform the Court promptly of any alteration in his economic situation. 

1. If the economic situation of the applicant which has led to the grant of legal aid according to Rule 377.1(a) alters during the proceedings, the Court may at any time, of his own motion or on a reasoned request by the other party, withdraw wholly or partly legal aid but only after having heard the applicant.

2. The Court may withdraw wholly or partly legal aid if the applicant: 

(a) by inaccurately representing the circumstances of the case, has misrepresented its prospects of success, which are determinative for the approval of assistance with Court costs; or

(b) has grossly negligently made false statements as to his personal or economic circumstances; or

(c) has not immediately informed the Court of a considerable improvement to his financial circumstances;

(d) has been in arrears for longer than three months with the payment of a monthly instalment or with the payment of any other amount.

3. An order withdrawing legal aid shall state the reasons on which it is based.

1. An order wholly or partly refusing or withdrawing legal aid may be appealed to the Court of Appeal. The appeal shall be filed with the Court of Appeal within a period of one month after receiving the order and satisfy the provisions of Rules 377 to 379. The President of the Court of Appeal shall appoint a panel which shall decide on the appeal having heard the applicant.

2. An application for legal aid to appeal a decision of the Court of First Instance shall be filed with the Court of Appeals and shall satisfy the provisions of Rules 377 to 379. The Application for legal aid to bring an appeal against a decision of the Court of First Instance shall be filed within the time limit provided for the appeal as specified in Rule 224 and should, where possible, be accompanied by the appeal itself. The Application shall be assigned according to Rule 345.8.

1. Where the Court has ordered another party to pay the costs of the applicant for legal aid, that other party shall be required to refund to the Court any sums advanced by way of legal aid. In the event of a shortfall between the costs so ordered and the sums advanced by way of legal aid the applicant may be required to meet such shortfall from any damages or compensation awarded by the Court or from any sum received by way of settlement.

2. In the event of withdrawal of legal aid under Rule 380, the applicant may be required to refund to the Court any sums advanced by way of legal aid.