Bifurcation of Revocation Counterclaim

On 5 August 2024, the claimant filed an action for patent infringement against a total of 14 defendants. The notice of the publication of the grant of the patent was published on 14 August 2024. On the same day, 14 August 2024, 6 defendants and two other group-affiliated companies filed an action for revocation with the Central Division in Milan. 8 defendants filed a counterclaim for revocation on 14 November 2024. Together with its defence to the counterclaim for revocation, the claimant filed an application for an amendment to the patent in dispute. On the same day, the claimant filed its defence to the revocation action and another application for an amendment to the patent with the Central Division in Milan. The Local Division exercises its discretion to refer the counterclaim for revocation to the Central Division and to continue the action for patent infringement (Article 33(3)(b) UPCA). While it is generally advantageous to have the action for patent infringement and the counterclaim for revocation heard jointly by the same panel, the circumstances of this case justify a different decision. The parties have unanimously requested that the counterclaim for revocation be referred to the Central Division. Unanimous applications of all parties must be granted, unless serious counterarguments require a different decision. The panel does not see any such serious counterarguments. On the contrary, a referral of the counterclaim for invalidity appears to be appropriate, particularly for reasons of procedural economy. The revocation action and the counterclaim for revocation are essentially based on the same prior art and other grounds for invalidity, such as inadmissible extension, lack of technical contribution, and insufficient disclosure. The defendants themselves state that the counterclaim for revocation merely updates and supplements the grounds from the revocation action. The Central Division is therefore already familiar with the subject matter of the counterclaim for revocation (LK Düsseldorf 4. 3. 2025, CFI 468/2024, CFI 687/2024).