UPC Applies Rules of Procedure Strictly to Exclude Late-Filed Arguments

On 5 November the Paris Central Division of the UPC upheld Juul Labs International’s EP 3504991 as granted after a revocation action was filed on 15 September 2023 by NJOY Netherlands B.V. (the Claimant). This UPC action is another example of a relatively fast decision, taking just under 13 months from the initial filing of the revocation action to the Paris Central Division handing down their ruling. It also gives some insight into how strictly the UPC intends to stick to the rules of the front-loaded procedure which requires parties to present their full case at the very earliest opportunity.

The UPC Rules of Procedure (RoP) ensure that the proceedings are front loaded. All parties involved are under an obligation to set out their full case as early as possible including submissions of their legal and factual arguments and supporting evidence. This has similarities with EPO appeal proceedings where it can be impossible to have admitted any requests, facts and arguments which are filed after the initial appeal or response deadline.

The below diagram illustrates the very short periods for response to each of the steps in revocation proceedings and parallel proceedings to amend the patent as set out in the RoP.

Claimant

Defendant

When submitting the initial Statement for Revocation, the Claimant cannot anticipate which facts and arguments the Defendant will dispute. Therefore, the Claimant is permitted in their Reply to the Statement of Defence, to present additional argumentation in response to any arguments raised by the Defendant in its Statement of Defence. In fact, in order to ensure fairness in proceedings, the RoP explicitly set out that if a party, in its first submission, raises an argument and the other party takes issue with this argument in reply, the other party may further substantiate its initial argument in its second submission.

Applying this principle in the present case, parts of a declaration filed by the Claimant with the Reply to the Defence were admitted into proceedings as those parts of the Declaration dealt with arguments made by the Defendant regarding common general knowledge in the Statement of Defence. A clear distinction between newly added arguments and arguments in response to an earlier filed report could not be made by the Central Division. “In order to secure the claimant’s right to be heard”, the whole of the declaration was therefore admitted.

However, the RoP explicitly limit responses to the matters previously raised. For example, Rule 32.3 RoP second sentence states in connection with the Claimants Rejoinder to the Reply that “[t]he Rejoinder shall be limited to the matters raised in the Reply” (emphasis added). In the Application to Amend proceedings it was found that pages 1 to 15 of the Claimants Rejoinder to the Reply were not limited to the issues raised in the Defendants Reply to the Defence. The Central Division considered that “there is no good reason why an exception should be made” and that “in the interest of efficient proceedings, no further arguments can be introduced at this stage of proceedings”.

The EPO Rules of Procedure of the Boards of Appeal (RPBA) take a similar approach, with the admittance of new requests, facts, objections, arguments and evidence after the filing of the grounds of appeal or reply being at the discretion of the Board in view of “the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy”.

This Decision shows the UPC Judges are willing to enforce the RoP to exclude new material filed outside of the strict timetable set out in the RoP and acts as a warning for would be litigants of the need to present their full case at the outset, similar to EPO appeal proceedings.