Case Law
Rule 30: Application to amend the patent

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 05/08/2024, Seoul Viosys Co., Ltd. (Case/ Registry number: App_41447/2024, ORD_42131/2024)
Example of decision on application to amend the patent: "1. Rule 30.2 RoP leaves the date of a decision on the admission of a request for amendment of the patent open and therefore leaves it to the discretion of the court. The judge-rapporteur may therefore also defer such a decision.
2. Insofar as Rule 32.1 RoP provides for a two-month period from service of the request for amendment of the patent for the reply to a request for amendment of the patent, subsequent requests for amendment pursuant to Rule 30.2 RoP are not covered by this. In the case of such requests, the interests of the defendant cannot only be taken into account in the context of the authorisation decision. Rather, the granting of a right to be heard is also possible outside the statutory time limit regime standardised in Rule 32 RoP."

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 19/07/2024, Meril Gmbh v. Edwards Lifesciences Corporation (Case/ Registry number: CC_584916/2023, ORD_598366/2023)
Example of decision on the interpretation of the term "subsequent": "Furthermore, Rule 30 (2) ‘RoP’ allows for a subsequent request to amend the patent, provided that such request is admitted into the proceedings with the permission of the Court. The term ‘subsequent’ must be interpreted as referring to a request which follows a previous one, making it sufficiently clear that the term refers to any request that amends the original application to amend the patent."

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 30/04/2024, Edwards Lifesciences Corporation / Meril Italy srl (Registry number : App_19959/2024 and 23242/2024 ORD_24620/2024)
Example of decision on subsequent request to amend the patent; “8. The provision grants the Court the discretionary powers to admit an amend of the patent even after a previous application to amend that patent has been submitted and even after the deadline for filing a defence to the revocation action has passed.”
“17. This judge-rapporteur reiterates its position from the order of 28 February 2024 that the interest of the patent holder to align its defence with the one in the counterclaims for revocation is not a reasonable justification for the purpose of addressing the subsequent request to amend the patent. The defendant has not provided any new explanation on why an identical defence is necessary across different challenges. It must be reaffirmed that the risk of conflicting decisions does not arise from defending a patent with different strategies in response to distinct challenges.”
“As anticipated in previous para. 20, the consideration of the principle of fairness and equity and, especially, of the right to a fair trial, necessitates granting the claimant a reasonable time period, set in one month, to lodge an additional defence to defendant’s new set of amendments; therefore, the relative claimant’s request in this regard is granted.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 27/03/2024, FUJIFILM Corporation/ Kodak GmbH, Kodak Graphic Communications, Kodak Holding GmbH (Case number UPC_CFI_355/2023 ORD_7096/2024)
Example of decision on the access limited to confidential information: “According to R. 262A.1 RoP a party may therefore 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. The application may be allowed by the court 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 (R. 262A.5 RoP). The number of persons which are granted access to such information or evidence 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 (R. 262A.6 RoP).”
“A party seeking protection for confidential information, therefore, has – in a first step – to put forward sufficiently substantiated arguments, why it believes the information concerned is to be protected. It is therefore not enough to have resort to general circumstances such as there being competition between the parties to the dispute. For the court to be able to assess whether it may limit a party’s access to the file, it has to be furnished with concrete arguments which make it sufficiently plausible that the facts which are sought to be protected are confidential in nature. Where a party fails to submit sufficient arguments, a limitation in access by the opposing party has to be denied. The court has to be put in a position to understand, why the applicant believes that the concrete information to be protected is vulnerable and confidential. It is therefore necessary to substantiate with regard to each redacted part of the written submissions, why this explicit part of the submission amounts to confidential information.”

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 28/02/2024, Meril Italy srl (Registry number: App_7184/2024 ORD_7283/2024)
Example of decision on language of proceedings: “29. The provision confers to the Court the discretionary powers to admit an amend of the patent even after a previous application of amend of that patent has been submitted and even after the expiration of the time period for amending the patent, that is the time period for lodging of a defence to revocation.
30. While using these discretionary powers the Unified Patent Court judges have to observe the principles of proportionality, flexibility, fairness and equity, mentioned in the preamble 2 and 4 of the Rules of Procedures (see, UPC CFI 412/2023 CD Paris, order of 9 February 2024).
31. With particular regard to the admission of a subsequent request to amend the patent, they have to take into account, on one hand, the fact that a subsequent amend of a patent may lead to a more efficient proceedings, narrowing the subject-matter and simplifying the procedural activities, and to a proper safeguard of the interest of the patent proprietor in controlling the scope of protection of its exclusive rights.”
“33. In order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent the applicant has to offer a justification of its request, explaining why it has decided to change the original request to amend the patent.”

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 27/02/2024, Meril Italy srl / Edwards Lifesciences Corporation (Case number UPC_CFI_255/2023 App_7184/2024)
Example of decision on the application to amend a patent subsequent to a previous application: “26. According to this latter Rule 30 (2) ‘RoP’, any ‘subsequent request’ to amend the patent may only be admitted into the proceedings with the permission of the Court.
27. The term ‘subsequent’, present in Rule 30 (2) ‘RoP’, referred to by Rule 50 (2) ‘RoP’, has to be interpreted as regarding to an act which follows in succession a previous one and, therefore, it appears clear enough that the term relates to the original application to amend the patent and indicates any request to amend the patent – whether proposed in a completely new version or as an amend of a previous amend – which comes after the first one.”
“31. With particular regard to the admission of a subsequent request to amend the patent, they have to take into account, on one hand, the fact that a subsequent amend of a patent may lead to a more efficient proceedings, narrowing the subject-matter and simplifying the procedural activities, and to a proper safeguard of the interest of the patent proprietor in controlling the scope of protection of its exclusive rights.
32. On the other hand, the admission of subsequent requests to amend the patent may affect the purpose of delivering an expeditious decision, forcing an extension of the time of the written procedure in relation to the right of the other parties to arrange the consequent defence, and may undermine the right of defence of these latter parties.
33. In order to enable the Court to strike a fair balance between the opposed interests involved in the request to amend the patent the applicant has to offer a justification of its request, explaining why it has decided to change the original request to amend the patent.”
“34. The applicant has justified its subsequent request to amend the patent with the fact that in Munich Local Division proceedings, in which it filed an infringement action against Meril Life Sciences Pvt ltd., parent company of the claimant, and Meril GmbH, European Headquarter, the defendants lodged counterclaims on grounds – after the expiration of the time period for filing an application to amend the patent in the current proceedings – which were not identical to those of the current revocation action, therefore he needed to align the proposed amendments in both proceedings for reasons of consistency and procedural economy.”
“41. It may be added that the purpose of consistency of the decisions may come into play only where those decisions address the same subject-matter; therefore it does not seem to be pertaining to the situation at hand where the (subsequent) request to amend the patent has been lodged as a reaction to the attack of its patent brought in a different proceedings on different grounds, that is on grounds that are outside the scope of the current proceedings.
42. The subsequent request to amend the patent may not be justified by the purpose of procedural economy as well.
43. Actually, this principle, which has to be interpreted as to refer to each single proceedings, may be undermined where several applications to amend the patent are lodged, as they would result in an extension of the time of the proceedings and an increase in the number of parties’ submissions and, in general, of judicial actions.”
“45. Besides, the reference to Rule 30 (3) ‘RoP’ does not seem to be relevant, as it relates to the duty of the patent proprietor requesting the amend of its patent to notify its application to the Court before which other proceedings involving that patent are pending.
46. Indeed, this provision does not relate to the right of the patent proprietor to amend its patent, but impose a legal obligation aimed at allowing the Court before which the same patent is at issue to adopt the consequent resolutions.”

Court of First Instance - The Hague (NL) Local Division, Order dated 17/01/2024, Plant-e, Plant-e Knowledge v. Arkyne Technologies S.L. (Case number UPC_CFI_239/2023, ORD_2223/2024)
Example of decision on the time limits for responding to a counterclaim for revocation : “Within two months of service of a Statement of defense 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.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 14/12/2023, N.V. Nutricia v. Nestle Health (Case number UPC_CFI_201/2023, ORD_594886/2023)
Example of decision on counterclaim of nullity and time limit: “According to R. 29.1 RoP, the claimant must file a Defence to the Counterclaim for revocation and any Application to amend the patent pursuant to R. 30 RoP within two months of service of a Statement of defence containing a Counterclaim for revocation. Since such a Statement of defence was served on 20 October 2023, the Defence to the counterclaim as well as any Application to amend the patent have to be filed by 20 December 2023.
R. 270.6 (b) RoP applies only for the Statement of claim, not to the Counterclaim for revocation, which must be included in the Statement of defence (see R. 25.1 RoP). “