Auxiliary Requests in UPC Patent Litigation: Analysis of Rules and Practical Application

In patent litigation before the Unified Patent Court (UPC), Auxiliary Requests are an essential tool for patent proprietors when defending against counterclaims of patent revocation. Reyda IP's European Patent Attorney, Simin Dai, will provide a comprehensive analysis of the applicability, timing requirements, admissibility standards, and practical use of auxiliary requests based on relevant rules and case law. In particular, we will explore how to effectively use auxiliary requests within the framework of the UPC's Rules of Procedure and the Unified Patent Court Agreement (UPCA) to maximize patent protection.

1. Rules for the Applicability of Auxiliary Requests

The submission of auxiliary requests in UPC litigation, especially in the context of counterclaims of revocation, is governed by Rule 30 of the UPC Rules of Procedure. This rule outlines the requirements and procedures that patent proprietors must follow when submitting auxiliary requests.

• Rule 30.1 of the UPC Rules of Procedure:

The Defence to the Counterclaim for revocation may include an Application by the proprietor of the patent to amend the patent, which shall contain:(a) The proposed amendments of the claims of the patent concerned and/or the specification, including, where applicable and appropriate, one or more alternative sets of claims (auxiliary requests), in the language in which the patent was granted. Where the language of the proceedings [Rule 14.3] is not the language in which the patent was granted, the proprietor shall lodge a translation of the proposed amendments in the language of the proceedings; if the patent is a European patent with unitary effect, and if requested by the defendant, the proprietor shall also provide a translation into the language of the defendant's domicile in an EU Member State or of the place of the alleged infringement or threatened infringement in a Contracting Member State;

(b) An explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC, and why the proposed amended claims are valid, and, if applicable, why they are infringed;

(c) An indication of whether the proposals are conditional or unconditional; if conditional, the proposed amendments must be reasonable in number, given the circumstances of the case.

• Rule 30.2 of the UPC Rules of Procedure:

Any subsequent request to amend the patent may only be admitted into the proceedings with the permission of the Court.

• Rule 30.3 of the UPC Rules of Procedure:

Where other proceedings involving the patent subject to an Application to amend the patent are pending, the claimant shall notify the Court or the relevant authority of such an Application and provide the information required under paragraph 1(a).

Additionally, Rule 50.2 of the UPC Rules of Procedure further elaborates on patent amendment applications:

Any Application to amend the patent shall contain the matters referred to in Rule 30.1(a), (c), and an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC, and why the proposed amended claims are valid. Rule 30.2 shall apply.

These provisions lay the foundation for the rules governing auxiliary requests. Patent proprietors must specify the proposed amendments in their auxiliary requests and provide detailed explanations to demonstrate compliance with the requirements of the European Patent Convention (EPC), particularly regarding the clarity, conciseness, and scope of protection.

2. Admissibility Requirements for Auxiliary Requests

In UPC litigation, the admissibility of auxiliary requests depends not only on the number and reasonableness of the requests but also on their direct relevance to the challenged claims. According to the judgment in Bitzer v. Carrier (July 29, 2024, §§18-22), the court clarified the scope of admissibility for auxiliary requests, emphasizing that amendments should only relate to the challenged claims. Patent proprietors cannot amend claims that have not been contested in the auxiliary request.

Admissibility Standard: Amendments Related to Challenged Claims

In Bitzer v. Carrier, the court ruled that:

Amendments shall only relate to challenged claims.

This means that auxiliary requests must focus exclusively on the claims challenged by the counterclaim for revocation and cannot extend to unchallenged claims. However, the court also pointed out that auxiliary requests may introduce features from non-challenged claims into the challenged original claims, and such modifications are still admissible. Thus, auxiliary requests can strengthen the challenged claims by incorporating elements from claims that were not attacked.

The key conclusion from this ruling is that auxiliary requests themselves are considered admissible, but the court will only address the modifications concerning the challenged claims.

UPC Rules and Interpretation

Within this context, Rule 50 and Rule 30 of the UPC Rules of Procedure continue to apply, clarifying the requirements for amendment applications. These rules emphasize that auxiliary requests must not only relate to the challenged claims but must also comply with the EPC requirements, particularly Article 84 (clarity of claims) and Articles 123(2), (3) (prohibition on extending the protection scope or introducing new matter not originally disclosed).

Additionally, Article 76(2) of the UPCA further restricts the basis for substantive decisions:

Decisions on the merits may only be based on grounds, facts, and evidence which were submitted by the parties or introduced into the procedure by an order of the Court and on which the parties have had an opportunity to present their comments.

This means that the examination of auxiliary requests must rely solely on the evidence and arguments already submitted in the proceedings, and any new materials or arguments beyond these bounds will not be considered.

Balancing the Number of Requests and the Scope of Amendments

While the UPC allows patent proprietors to submit multiple auxiliary requests when defending against revocation claims, the court made it clear in Meril v. Edwards Life Sciences that the number of auxiliary requests must be reasonable. According to Rule 30.1(c), the number of conditional auxiliary requests must correspond to the specific circumstances of the case and must not exceed reasonable limits.

It is also important to note that even if an auxiliary request successfully defends the patent, the patent proprietor may still have to bear a portion of the litigation costs. In the judgments of Meril v. Edwards Life Sciences and Bitzer v. Carrier, the patent proprietor was required to pay 40% of the total litigation costs. Therefore, patent proprietors must weigh the number of auxiliary requests against the potential costs they may incur.

3. Timing for Submitting Auxiliary Requests

The timing of submitting auxiliary requests is critical in UPC litigation. According to the UPC Rules of Procedure and relevant case law, the stage at which a patent proprietor submits auxiliary requests directly impacts whether the requests will be admitted and how they will affect the litigation outcome. The UPC Rules specify the requirements for submitting auxiliary requests during the first instance proceedings, appellate stage, and oral hearings. The timing issue is not merely procedural but also directly relates to the efficiency, fairness, and justice of the proceedings.

Auxiliary Requests After the Written Procedure

According to UPC provisions, after the written procedure has concluded, the court is cautious when admitting subsequent auxiliary requests. Typically, patent proprietors are expected to submit all their auxiliary requests during the written procedure. Any requests submitted after this point are subject to the court's discretion regarding their admission. For example, in Meril v. Edwards Lifesciences (Paris Central Division, April 30, 2024), the court admitted the auxiliary requests submitted after the written procedure had ended. This was because the patent proprietor reduced the number of amendments and presented unconditional offers, providing a reasonable explanation. The court found that this subsequent request struck a balance between procedural efficiency and fairness.

Auxiliary Requests During Oral Hearings

Submitting auxiliary requests during oral hearings is a more complex issue. According to the UPC Rules of Procedure, while patent proprietors may, in certain exceptional circumstances, submit new requests during oral hearings, strict conditions must be met. These requests must be based on new facts or arguments that were not anticipated during the written procedure. For example, in 10x Genomics v. Nanostring (Court of Appeal, February 26, 2024), the patent proprietor submitted amendment requests during the oral hearing. The court carefully examined the following two factors:

1. Whether there was sufficient reason for not submitting the request during the written procedure;

2. Whether the new request would delay the proceedings or cause unfair harm to the other party.

In this case, the court ruled that if the patent proprietor could demonstrate that the request was based on new developments or unforeseen circumstances, the court could admit the request depending on the specific facts. However, if the request was submitted merely to increase the other party’s litigation burden or delay the proceedings, the court might refuse to admit it.

Auxiliary Requests in the Appellate Stage

Submitting new auxiliary requests during the appellate stage is typically more stringent. According to Rule 222(2) of the UPC Rules of Procedure and Article 73(4) of the UPCA:

In principle, new requests, facts, and evidence should not be presented before the court of appeal.

This means that the court of appeal generally only reviews the requests already submitted in the first instance. New requests are only admitted in exceptional cases, and the patent proprietor must explain why the request was not submitted during the first instance. Additionally, the court will examine whether the new auxiliary request could reasonably have been submitted before the court of first instance. For example, in Meril v. Edwards Lifesciences (Paris Central Division, April 30, 2024), the court emphasized the importance of timeliness. If a new auxiliary request could reasonably have been submitted during the first instance and the patent proprietor failed to act, the request may be deemed inadmissible.

Furthermore, the court will consider two key factors when determining whether to admit new auxiliary requests:

1. Relevance: Whether the new auxiliary request directly affects the core issues of the appeal case. The relevance of the request is a critical factor in the court’s consideration during the appellate stage.

2. Position of the other party: When examining the new request, the court will fully consider the opposing party’s opinion. If the new request significantly increases the opposing party’s litigation burden or affects the fairness of the proceedings, the court may refuse to admit it.

In Panasonic v. OPPO and Panasonic v. Xiaomi (Mannheim Local Chamber, June 27 and July 4, 2024), the court further emphasized whether new amendments were necessary to address earlier arguments raised by the revocation plaintiff. If these requests could have been reasonably submitted earlier but were not, the court may refuse to admit the new requests.

Balancing Test for Late Requests

When determining whether to admit late auxiliary requests, the court usually applies a “balancing test” to ensure procedural fairness and efficiency. This test evaluates several key factors:

• Timing of submission: Could the new auxiliary request have been submitted earlier? If the patent proprietor failed to submit the request on time, is there a reasonable explanation?

• Procedural efficiency: Will the new auxiliary request delay the proceedings, reducing procedural efficiency? If admitted, will the request unfairly burden the other party?

• Reasonableness of the request: Is the newly submitted request directly related to the core issues of the case, and could it significantly affect the case outcome?

For example, in 10x Genomics v. Nanostring, the court weighed the impact of the patent proprietor’s new requests on procedural efficiency and ultimately decided to admit them, considering that they would help resolve the key issues in the case. In Meril Italy v. Edwards Lifesciences, the court ruled that aligning amendments across different proceedings was insufficient justification for submitting late requests. As a result, the court refused to admit those requests.

The timing of auxiliary requests directly affects their admissibility in UPC litigation. Patent proprietors must submit auxiliary requests at the appropriate stage of litigation and provide sufficient reasons for not submitting new requests earlier. When admitting these requests, the court will balance procedural efficiency, fairness, and the interests of all parties. Particularly in oral hearings and appellate proceedings, the court applies stricter scrutiny to late requests. Therefore, patent proprietors must carefully plan the timing of their auxiliary requests and ensure that they are closely tied to the core issues of the case to increase their chances of being admitted.