Focus: Revocation proceedings

Focus
Revocation proceedings

Revocation proceedings in the UPC begin with a Revocation action/Declaration of invalidity as the main proceeding, which may be followed by a Counterclaim for infringement and an Application to amend the patent as related proceedings. This page sets out the overall processes and timelines.

Revocation proceedings workflow
Revocation proceedings workflow

The overall sequence is:

  1. Within 2 months of being served with a claim, the defendant:
    • must lodge a defence to the Revocation action
    • may lodge a Counterclaim for infringement
    • may lodge an Application to amend the patent
  2. Within 2 months of the defence being lodged, the claimant:
    • must choose whether to reply to the Revocation action defence
    • if there is a Counterclaim for infringement, must lodge a defence to the Counterclaim
    • if there is an Application to amend the patent, must lodge a defence to the Application
  3. Within 2 months of the reply, or counterclaim defence, or application to amend the patent, the defendant:
    • must choose whether to issue a rejoinder to the reply to the Revocation action defence
    • if there is a Counterclaim for infringement, must choose whether to reply to the Counterclaim defence
    • if there is an Application to amend the patent, must choose whether to reply to the Application
  4. Within 1 month of the reply to the Counterclaim defence, or the defence to the Application, the claimant:
    • must choose whether to issue a rejoinder to the reply to the Counterclaim defence
    • must choose whether to issue a rejoinder to the reply to the Application defence
  • The diagram above shows the stages and potential related proceedings associated with Revocation 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 infringement 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