SONN Patentanwälte – IP Attorneys

UPC decision: Contents of the statement of claim of an infringement action

Rule 13 of the Rules of Procedure of the Unified Patent Court: Upon filing the statement of claim, no annexes were submitted. Instead, the statement of claim contains references indicating the intention to submit annexes as soon as electronic delivery to the defendant is possible. The infringement action is directed against four defendants. 

After a legal representative indicated willingness to accept delivery via email for all four defendants, the judge-rapporteur ordered the announced annexes to be uploaded. The timing of the effective delivery of the infringement action is disputed. The fact that the claimant uploaded the annexes to the CMS (Case Management System) subsequently does not change the date of receipt of the infringement action (the infringement actions were delivered to defendants 1 to 3 earlier than to defendant 4). 

According to Rule 13 Rules of Procedure, an infringement action can be effectively filed and delivered without annexes if the submission of these annexes is only announced for a later date in the statement of claim. The requirement to provide the defendant party with sufficient opportunity to be heard, also in view of annexes submitted later, may be addressed by fine-tuning the time periods. 

The delay in making the annexes accessible does not justify an extension of time in this case. Most of the annexes concern the contested embodiment or parallel proceedings involving the defendants and are already in the possession of the defendants. The remaining annexes concern the patent in suit, except for the feature analysis, and are publicly accessible. The feature analysis is already reproduced in the statement of claim. 

However, it is (again) noted that working with the new procedural law and the CMS poses significant challenges for all parties involved; therefore, the discretion granted to the division is exercised to exceptionally grant the request for an extension of the period by defendants 1) to 3) (UPC, August 29, 2023, CFI 14/2023)."