In patent disputes, as in life, it can be necessary to change your position, or at least give yourself the option of doing so. You may, for instance, want to bolster your defences by filing fallback requests to amend your patent. Or, you may need to add new arguments and legal claims to your case. Mistakes here can be costly.
The UPC’s procedures are famously designed to be front-loaded, and unsurprisingly it has looked critically at several requests for changes in its first year or so of operation. Most guidance to date relates to requests to amend the patent, and new decisions and orders are rapidly adding detail to the considerations involved.
Legal background
In the UPC, amending the patent is governed by Rules 30 and 50 of the Rules of Procedure of the UPC (RoP UPC). These rules entitle a proprietor to apply to amend its patent when it submits its defence to a claim for revocation. The proprietor may also file subsequent amendment requests, but these are only admitted with the permission of the Court.
Any application to amend the patent must include the proposed claim amendments (in the language in which the patent was granted), an explanation as to why the amended claims are valid and why they satisfy the requirements of Articles 84 and 123(2) and (3) EPC. The application must also include an indication of whether the amendment proposals are conditional or unconditional, and in the case of conditional proposals, the number of these must be reasonable in the circumstances of the case. If applicable, there must also be an explanation as to why the amended claims are infringed.
Common requirements
Several of the above requirements involve an “explanation” as to why the proposals satisfy certain criteria. This does not mean, however, that the explanation ultimately needs to be convincing.
As the Paris Central Division observed in its revocation decision in the Meril v. Edwards Life Sciences dispute (see our dedicated article here), “[w]hile a complete lack of explanation in an amendment request can render it inadmissible, an insufficient explanation does not necessarily have the same effect. In the latter case, the application may be unsubstantiated but not inadmissible” (paragraph 32). Provided there is some attempt at an explanation, the application to amend the patent should be admissible. However, any deficiencies will need to be addressed in a subsequent request.
What about the requirement for the proposed amendments to be “reasonable in number”? On this, initial signs suggest the Paris Central Division at least is minded to lean toward a more generous interpretation of this expression. Again, in the above Meril decision, it expressed the view that while the number of amendments originally filed (9 conditional amendments and 84 auxiliary requests) was “extremely high”, this did not mean that the number was “unreasonable” (paragraph 33). In coming to this conclusion, the Paris Central Division took into account the complexity of the case, the importance of the patent at issue and the interrelationship with other proceedings concerning related patents. So, whether the number of proposed amendments is reasonable will be judged based on the overall circumstances of the case, and even a relatively high number might be reasonable.
A low initial barrier?
These two pieces of guidance from the Meril decision mean that the bar to admittance of applications to amend the patent made with the revocation defence – though dependent on the circumstances – could be relatively low. Brief explanations may be adequate, a high number of amendments might still be reasonable, and the other requirements are straightforward.
For those familiar with the workings of the EPO, a parallel here may be drawn with the Rule 116 EPC deadline prior to a first instance hearing, amendments filed before which are likely, depending on the circumstances, to be admitted into the proceedings. Similarly, the national practice of UPC countries, such as the Netherlands, also involves a relatively low bar to admittance (and especially earlier on in the proceedings) taking into account the principle of due process.
Unchallenged claims
A complication to the above occurs in situations when the patent is not attacked in its entirety. This was the case in the Bitzer v. Carrier dispute, and the Court developed a further admissibility requirement: that the amendments must only relate to challenged claims.
In its revocation action, Bitzer challenged only claim 1 of Carrier’s patent. With its defence, Carrier applied to amend the patent based on a main request and twelve auxiliary requests. These amendments did not just relate to claim 1, but also to other, non-attacked, claims.
The RoP UPC do not explicitly address the issue of amending a patent claim that has not been challenged, but the Paris Central Division saw patent amendment during litigation as a solely defensive tool and therefore reasoned that the patent may be amended only to the extent that it is necessary to react to the invalidity challenge (paragraphs 18-24 of the order of 30th April 2024).
EPO practitioners may find this reminiscent of Rule 80 EPC, which requires amendments to be occasioned by a ground for opposition. The EPC rule is more permissive however, because it does not require the ground for opposition to have been invoked by the opponent: the UPC nodded to the EPO’s differing practice by noting the administrative function of the EPO (paragraph 24 ibid.).
Based on this reasoning, the Paris Central Division declared Carrier’s amendment request to be inadmissible insofar as they amended claims other than claim 1. Also, the Division found that proposals to amend challenged claims by inserting features from unchallenged claims would be admissible (for these last two points, see the headnotes of the Bitzer decision of 29th July 2024). The finding of partial admissibility (i.e., the requests were not inadmissible in their entirety based on some inadmissible aspects) and especially the acceptance of a proposal to amend are welcome, flexible approaches: these may avoid the large numbers of claim requests often filed at the EPO by proprietors seeking to address different permutations of attacks from opponents.
Subsequent amendments
Whereas applications to amend the patent filed with the revocation defence face a low barrier to admittance, subsequent amendments are only admitted with the permission of the Court, even if they comply with the requirements described above (Rule 30(2) RoP UPC).
So, what does the Court take into account when deciding on whether to admit subsequent amendment requests?
As an initial point, a “subsequent” request presupposes that there is already an admissible amendment request, i.e., that the request made with the revocation defence is admissible (see Meril decision, paragraphs 29 and 30). In other words, an inadmissible application cannot be corrected by a subsequent request. Further, the rules do not provide for later reversal of a proprietor’s choice not to include any application in the revocation defence, which is another indication of the front-loaded character of UPC proceedings. This underlines the importance of filing an admissible amendment application with the revocation defence. There may well be no second chances.
This appears to be stricter than national practice of UPC countries such as in the Netherlands where there is no formal requirement to file amendments with the revocation defence rather than at a later stage (as long as it is not contrary to due process). Amendment requests can in principle be made at any stage of the proceedings – as long as the court has not yet rendered a final judgment – but may be rejected on due process grounds (for example if they are made at a very late stage and could have been brought forward earlier on in the proceedings).
There is, however, no hard deadline for filing subsequent amendments. In the Meril dispute, subsequent amendments filed after the closing of the written procedure were still allowed (see the order of 30th April 2024). Indeed, the patent was upheld on the basis of one of these.
Regarding the central question underlying the decision on admissibility, the Court must balance the interest of the proprietor in controlling the scope of protection of its rights against the right of defence of other parties, while ensuring that the proceedings run efficiently (paragraphs 10-12 of the order in Meril of 30th April 2024). Ensuring efficiency means that the Court also takes into account whether the new amendment would have been necessary at an earlier stage of the proceedings (part II, point 5 in the order of 27th June 2024 in Panasonic v. Guangdong OPPO and part III, point 3 in the order of 4th July in the related Panasonic v. Xiaomi case). In other words, should the amendment have been filed earlier?
Guidance on where this balance will lie in specific situations is limited at present. The Meril dispute provides both examples so far.
First, it was ruled that the interest of the proprietor in aligning its defence across multiple parallel cases before the UPC is not a good enough reason to admit a subsequent amendment (paragraphs 34-44 of the order of 27th February 2024). The proprietor had argued that allowing an aligning amendment would serve the overall procedural economy for the related cases but the Paris Central Division dismissed this, saying that the purpose of procedural economy “has to refer to each single proceedings”.
Second, an amendment that significantly reduces the number of requests, in this case from 84 to 6, would, unsurprisingly, offer a meaningful benefit to procedural efficiency. Also, it would not unreasonably hinder the other party (paragraphs 18-20 of the order of 30th April 2024).
Cost considerations
In the Meril case, even though Edwards successfully defended its patent based on an amendment filed late in the proceedings, there was a significant sting in the tail in the form of costs: Edwards was held to be liable for 40% of the costs of the Court and of the parties “as the revocation action was dismissed solely because the defendant submitted a limitation of the patent during the proceedings” (paragraph 158 of the Meril decision).
Was this a punishment for initially filing a relatively high number of amendment requests and only reducing this number much later in the proceedings? The Bitzer decision suggests not. Here, Carrier was allocated the same proportion of costs, 40%, even though the amendment that was upheld was filed with its revocation defence, with the Court using the same wording of the Meril decision as cited above (paragraph 96 of the Bitzer decision).
It therefore seems that a validity issue with the granted claims may well have cost implications, even if amendments are filed with the revocation defence.
Amending the case
A party may also apply to amend its case at any stage of the proceedings under Rule 263 RoP UPC, which relates to “leave to change claim or amend case”.
Any amendments to the patent are outside the scope of this rule, but are rather governed by Rules 30 and 50 RoP UPC, as explained above. This distinction was explained in the Meril order of 27th February 2024 (paragraphs 20-24). This is interesting as this is different from “for example” Dutch and UK national practice where patent amendments are considered a request for amending the case.
Indeed, even amending the designation of a patent amendment request, e.g., to remove a limitation for the amendment to apply only to the German designation of the patent, was found to be governed by Rules 30 and 50 RoP UPC and outside the scope of Rule 263 RoP UPC. This was the position taken by the Düsseldorf Local Division in a recent order in the Fujifilm v. Kodak dispute (page 6, point 2).
For the amendments that are governed by Rule 263 RoP UPC, amendment applications must explain why the change was not included in the original pleading. If the change is not an unconditional limitation to a claim (in which case it will be granted under Rule 263(3) RoP UPC), then the party seeking the amendment must convince the Court that the change could not have been made any earlier in the proceedings and will not unreasonably hinder the other party.
Initial decisions in this area suggest that the Court will be strict on not allowing amendments that could have been made earlier (which is similar to national practice of UPC countries such as the Netherlands). Nonetheless, an example of an allowable amendment to the case was seen in the dispute involving OrthoApnea and Vivisol. Here, new facts and arguments in the rejoinder to the statement of defence were considered a bona fide response to the statement of defence and so were allowable (page 5, points 8.2 and 8.3 of the order of 8th July 2024).
Amendments in applications for provisional measures
The RoP UPC do not include any rules on amending the patent in an application for provisional measures or by subsequent filings in the context of summary proceedings. More guidance on this is expected from the Court of Appeal in the Abbott v. Sibio proceedings where it decided to hear parties on this issue at the oral hearing: “The Court of Appeal notes that the allowability of auxiliary requests in preliminary injunction proceedings has not yet been decided by the Court of Appeal and merits a discussion during the oral hearing.” (See page 2, point 6 in the order of 26th July 2024.)
A note on appeals
Rule 222(2) RoP UPC also allows for new requests, facts and evidence to be admitted into appeal proceedings. This is similar to, but less detailed than, the provisions in Articles 12 and 13 of the Rules of Procedure of the EPO’s Boards of Appeal.
Again, whether the new submission could have already been made (before the Court of First Instance) is a key consideration on appeal, as are the relevance of the new submissions for the decision and the other party’s position on the new submissions. UPC case law has not yet produced any guidance the admissibility of amendments during appeal. But, as in the EPO, this is sure to be a hotly contested area in the future, so watch this space.
Practice points
To sum up, in keeping with the front-loaded nature of UPC procedure, proprietors should do their best to ensure all useful patent amendments are filed with their revocation defence. This is because it is the only point when a proprietor is entitled to file amendments to its patent and there is no guarantee that entirely new amendments in subsequent amendment requests would be admitted. Notably, where subsequent amendment requests were allowed, these substantially reduced the number of amendments in play. Filing new amendment requests at appeal is likely to be even harder.
Similarly, amendments to the case should be filed as early as possible.
Finally, proprietors should be prepared to shoulder a proportion of the costs of the entire proceedings if their patent is maintained based on an amendment.
