Counterclaim for revocation

Infringement proceedings
RoP25, RoP26
Claimant
Clerk
Defendant
Judge

Within three months of service of the Statement of claim for an Infringement action, the Defendant must lodge a Statement of defence. The Statement of defence may include a Counterclaim for revocation against the other party, which is described by Rule 25 as an “assertion that the patent alleged to be infringed is invalid”.

The Defendant starts the counterclaim: 

  1. In the main menu, navigate to First Instance > Counterclaims and Application to amend the patent and click on Counterclaim for revocation
  2. Read the guidance
  3. Enter the case number for the main Infringement action
  4. Click START
  • The Statement of defence in the Infringement action must not include the Counterclaim for revocation, but it must indicate whether a Counterclaim is being lodged
    • The Counterclaim for revocation must be lodged on the same day as the Statement of defence
    • The Counterclaim will form a related proceeding to the main Infringement action
  • The roles of Claimant and Defendant will be reversed in the counterclaim compared to the Infringement action
  • In most cases, the workflow will duplicate the Infringement action, with the same dates being set for the same hearings and the same orders being issued twice (once in regard to the action, once in regard to the counterclaim)
    • If bifurcation happens, the workflow will continue but with separate panel, hearings, and orders