Legal framework
Amendments to the case: Under R. 263.1 of the Rules of Procedure (RoP), a party may, at any point during the proceedings, request the Court's permission to alter its claim or amend its case, which may include the addition of a counterclaim. The rule is primarily concerned with ensuring that late or unclear amendments to a case do not unduly hinder the other party in its defense.
Patent amendments: Under R. 30.1 RoP, the patent proprietor may defend their patent in an amended version against a counterclaim for revocation. In addition to Art. 76 UPCA, R. 30 RoP specifies what requirements a patent holder needs to meet in order to file a clear and comprehensive application to amend the patent.
Recent amendment cases
In JingAo/Astroenergy (March 31,2025, UPC_CFI_425/2024), the Munich Local Division, in accordance with R. 30 RoP and R. 263 RoP, granted all of the claimants' requested changes, including patent amendments in light of an EPO opposition decision, and the addition of new versions of allegedly infringing products discovered after the initial filing.
In Supponor/AIM Sport (April 11, 2025, UPC_CoA_169/2025), the Court of Appeal (CoA) allowed the addition of a new defendant, territorial extension, and amendments to the infringement action on the basis of R. 263 RoP.
In Fujifilm/Kodak (April 2, 2025, UPC_CFI_359/2023 and UPC_CFI_365/2023), the Mannheim Local Division, taking into account both provisions, permitted clarifying amendments to the claims but refused implicit patent amendments, emphasizing the need for a proper, formal application.
Practical guidelines from these cases
Based on these decisions, the practical guidelines can be summarized as follows.
| Details | Claim amendments (R. 263 RoP) | Claim amendments (R. 263 RoP) |
|---|---|---|
What is covered? |
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What isn't covered? |
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Formalities |
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Key takeaways
- Applying the correct rule is essential for the admissibility and effectiveness of any amendment in UPC patent litigation. Therefore, it is important to know the differences between R. 30 and R. 263 RoP.
- 263 RoP covers the lack of specificity and the amendment responding to it concerning the substance of the request, not the wording.
- When it comes to amending the patent itself, R. 30 is lex specialis to R. 263 RoP.
- Patent amendments need not be linked to the invalidity grounds in the counterclaim for revocation.
- It is possible to introduce an amendment based on a decision of the EPO division, since the RoP aim to synchronize UPC proceedings with EPO proceedings.
The authors thank Laura Schnackerz for her help in drafting this article.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
