CD Paris, 27 February 2024, Order On Request To Amend The Patent, UPC_CFI_255/2023

• Published date: 25 March 2024
• Law Firm: Bardehle Pagenberg
• Author: Mr Alexander Wunsch and Anna Giedke

1. Key takeaways

Request to further "amend the case" or "amend the patent" by defendant in revocation action due to invalidity attacks brought in the parallel counterclaim for revocation was rejected

Defendant in revocation action applied to amend the patent in due time, i.e, within the time period for lodging the defence to revocation. It then requested a change of the original application to amend the patent and referred to Rule 263.1 RoP (leave to amend its case) and R. 30.2 RoP (permission to amend the patent). According to Defendant, an earlier submission was not possible because it was a reaction to a parallel counterclaim for revocation. The amendment should be accepted for reasons of consistency and procedural economy. The CD Paris rejected the request.

The request to replace the original application to amend the patent with a new set of amendments does not fall under Rule 263 RoP...