Amending amendments to the patent at the UPC

In seeking to promote procedural efficiency and expedition, proceedings at the Unified Patent Court (UPC) are front-loaded, with the initial written procedure designed to consolidate all the parties’ arguments and claims, as well as the facts and evidence supporting these, from the outset.

One aspect of the case management where this becomes important is in requesting proposed amendments to the patent.

In revocation proceedings at the UPC, or a counterclaim for revocation, the patent proprietor may propose, as part of their defence, to amend the claims of the patent in suit.  Such an amendment to the patent may be as part of an unconditional main request or as part of a reasonable number of conditional or auxiliary requests.  This is a practice that European Patent Attorneys will be familiar with as part of Opposition proceedings at the EPO.

Subsequent requests or changes to proposed amendments of the patent may be admitted at the discretion of the Court.  In setting out guidelines for the exercise of this discretion in ORD_7184/2024 (UPC_CFI_255/2023, Meril Italy v Edwards Lifesciences, 27 February 2024), the Paris Central Division reiterated the general aim of the need for efficient and expeditious proceedings and whether the change would facilitate or hinder such an aim.  Moreover, the Court considered that the admission of such a change would need to strike a “fair balance” between the interests of the patent proprietor in controlling the scope of the patent and the right of the opposing party to prepare its arguments in the case.  In this case, the justification of aligning the proposed amendments with parallel infringement proceedings at the Munich Local Division and the resulting alleged procedural economy was found to be unconvincing.  Similar principles are also found in ORD_598480/2023 (UPC_CFI_252/2023, NanoString v President and Fellows of Harvard College, Munich CD, 17 October 2024) in which further auxiliary requests also were not admitted into the proceedings.

The guidelines set by the Paris Central Division were referenced by the Mannheim Local Division in ORD_38680/2024 (UPC_CFI_ 210/2023, Panasonic v OPPO, 27 June 2024), in emphasising the need to consider whether the change could have been made or requested at an earlier stage in the proceedings and whether its admittance would cause delays.  ORD_62955/2024 (UPC_CFI_22/2023, 10x Genomics v Vizgen, Hamburg LD, 20 December 2024) provides another example where the application to introduce further auxiliary requests was refused because it was determined that the application could have been made earlier.

Two examples where a request to change the proposed amendments to the patent were allowed include ORD_24620/2024 (UPC_CFI_255/2023, Meril Italy v Edwards Lifesciences, Paris CD,  30 April 2024) and ORD_40822/2024 (UPC_CFI_355/2023, FUJIFILM v Kodak, Düsseldorf LD, 2 August 2024).  In the former case, the change led to a “significant reduction of the auxiliary requests”, thereby “offer[ing] a meaningful contribution to the efficiency of the proceedings … and facilitating a more expeditious decision”.  In the latter case, the change was not to the substance of the amendment but rather to its territorial scope (the patentee having originally specified amendments were to apply to the German designation only, but later regretting this).  On the other hand, in ORD_40903/2024 (UPC_CFI_240/2023, Oerlikon v Himson, Milan LD, 17 September 2024), the application to introduce a new auxiliary request in response to a new attack was refused on the basis that the request was not an effective response to the new attack.

In summary, the decisions to date on this issue seem to indicate that all the auxiliary requests need to be filed at the earliest opportunity in order to avoid difficulties further along in the proceedings.  That being true and advisable, the Hamburg Local Division has taken a pragmatic approach with respect to the validity of independent claims within the main or auxiliary requests in its decision in ORD_598391/2023 (UPC_CFI_54/2023, Avago v Tesla, 26 August 2024).

The case relates to an infringement action with a counterclaim for revocation between Avago and Tesla. The patent in suit, which relates to the control of the power supply to electrical circuits and their modules, was found to be invalid as granted for both independent claim 1, describing the system, and independent claim 3, describing the corresponding method, with both claims being found to be anticipated.  However, while claim 1 of the second auxiliary request was found to be valid, independent claim 3 of all the auxiliary requests was found still to be anticipated.  However, the Court allowed the patent to be maintained with the second auxiliary request amended to remove claim 3.

In reaching this conclusion the Court determined that “a patent can remain (partially) valid to the extent of individual independent claims within the scope of a complete set of claims submitted as the main or an auxiliary request”.

The takeaway lesson from the Mannheim decision is that while it is good practice to prepare a full range of main and auxiliary requests for the amendment of the patent in suit from the outset at the UPC, the Court is likely to accept further amendments where they are limiting to deleting or removing some subset of claims. As such, a request that includes a valid independent claim will likely not fall due to the existence of other invalid claims. This provides some limited succour to those preparing auxiliary requests at an early stage with an eye to the various potential outcomes and pitfalls ahead.