An infringement action in the UPC is a legal proceeding to enforce a Unitary Patent or a European Patent, that has not been opted out of the UPC, against an alleged infringer. An infringement action can be brought against a single defendant or multiple defendants, and it can be used to seek a variety of remedies, such as injunctions or damages.
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”.
Focus: Infringement proceedings
Focus
Infringement proceedings
Infringement proceedings in the UPC begin with an Infringement action as the main proceeding, which may be followed by a Counterclaim for revocation and an Application to amend the patent as related proceedings. This page sets out the overall processes and timeline.
Infringement proceedings workflow
The overall sequence is:
Within 3 months of being served with a claim, the defendant:
must lodge a defence to the Infringement action
may lodge a Counterclaim for revocation
Within 2 months of the defence being lodged, the claimant:
must choose whether or not to reply to the Infringement action defence
if there is a Counterclaim for revocation, must lodge a defence to the Counterclaim
if there is a Counterclaim for revocation, may lodge an Application to amend the patent
Within 2 months of the reply, or counterclaim defence, or application to amend the patent, the defendant:
must choose whether or not to issue a rejoinder to the reply to the Infringement action defence (this must be within 1 month if there is no counterclaim)
if there is a Counterclaim for revocation, must choose whether or not to reply to the Counterclaim defence
if there is an Application to amend the patent, must lodge a defence to the Application
Within 1 month of the reply to the Counterclaim defence, or the defence to the Application, the claimant:
must choose whether or not to issue a rejoinder to the reply to the Counterclaim defence
must choose whether or not to issue a reply to the Application defence
Within 1 month of the reply to the Application defence, the defendant:
must choose whether or not to issue a rejoinder to the reply to the Application defence
The diagram above shows the stages and potential related proceedings associated with Infringement proceedings:
Pink indicates a claimant, blue a defendant
Solid lines show required workflow, dotted lines show optional workflow
(R xx) shows the relevant Rules of procedure
The number of months indicates the maximum time available for each stage
While in other legal systems, the Counterclaim for revocation and Application to amend the patent may be submitted in a Statement of defence, in the UPC they are separate:
The statement of defence must indicate whether a counterclaim or application for amendment will be filed
The actual cases must be filed separately as related proceedings
