Unitary Patent: UPC's Power to Amend

Venetian Patent Act 1474

Source Wikipedia

Yesterday I presented a talk on the unitary patent and the Unified Patent Court. I had a good audience which included some familiar faces as well as several new ones. At the end of the talk I took questions and one of them was on the Court's power to amend.  I was able to answer the question from memory but I could not give chapter and verse and promised to do so in this blog.

As I said yesterday, the starting point is the European Patent Convention art 138 (3) of which provides:

"In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings."

The competent court in actions or counterclaims for revocation of unitary or other European patents will be the Unified Patent Court (see art 65 (1) of the UPC Agreement).  Art 65 (3) of the agreement provides:

"Without prejudice to Article 138(3) of the EPC, if the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part."

The draft Rules of Procedure that have been prepared by the Preparatory Committee to which I referred yesterday provide for an application to amend to be pleaded in a reply and defence to counterclaim for revocation (rule 12 (3) (a) or in a defence to an action for revocation (rule 43 (2) (a)).

Rule 29 (a) requires a claimant to lodge an application to amend his or her patent within 2 months of service of a defence that includes a counterclaim for revocation together with the defence to that counterclaim.

An application to amend the patent must contain the following particulars (see rule 30):

"(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."

Rule 50 (2) makes a similar provision where the application to amend is made in a defence to a a claim for revocation.

If an application to amend the patent is lodged, rule 12 (4) requires the defendant to lodge a defence the application to amend the patent in his or her 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. The defence to an application to amend the patent must be served within 2 months (rule 32 (1)).  There are similar requirements in rule 43 (3) where the application to amend is made in a defence to a claim for revocation.   

In his or her defence to an application to amend the defendant must state whether he or she opposes the application and, if so, why.  He or she may do so on the grounds that:

(a) the proposed amendments are not allowable; and
(b) the patent cannot be maintained as requested.

The proprietor may lodge a reply to the defence to the application to amend the patent within 1 month of service of the defence and the defendant may within one month of the service of the reply lodge a rejoinder. The rejoinder shall be limited to the matters raised in the reply (see rule 32 (3)).

The application to amend will follow the procedure set out in art 52 of the UPC Agreement.  An interim and possibly oral procedure will follow the written procedure mentioned above. Evidence will be taken in accordance with art 53.

The language of art 65 (3) of the UPC Agreement is very different from s.75 (1) of the Patents Act 1977 which confers a discretion  on the Court or Comptroller when dealing with a patent application albeit one that has been modified by s,75 (5) (see Zipher Ltd v Markem Systems Ltd and Another  [2008] EWHC 1379 (Pat), [2009] FSR 1). There does not seem to be any scope under the Agreement for an objection  based on covetousness as used to be the case in England.

I hope I have answered that question comprehensively.   If anyone wants to discuss this article or indeed the UPC or unitary patent in general he or she should call me on 020 7404 5252 during office hours or message me through my contact form.

Further Reading

Date	Author	Title	Source
	Preparatory Committee	An Enhanced European Patent System	UPC website
23 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	NIPC Law
23 Jan 2016	Jane Lambert	Legal Aid for the IPC	NIPC Inventors
26 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	IP North West