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Rule 263: Leave to change claim or amend case

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 07/03/2025, Tridonic GmbH & Co KG v. CUPOWER Shenzhen Xiezhen Electronics Co., Ltd, CUPOWER Europe GmbH (Case/ Registry number: ACT_590302/2023, ORD_598569/2023)
Example of decision on inadmissibility of late-filed validity attacks: "Insofar as the defendants based a novelty attack on D7 (Onsemi) and an inventive step attack on a combination of D3 (Nguyen) and D4 (Lürkens) for the first time during the oral proceedings, these attacks are not taken into account. Insofar as this may be regarded as an amendment to the action pursuant to R. 263 of the Rules of Procedure, this is to be regarded as an amendment pursuant to R. 265 (2)(a), (b) RoP must be rejected. Firstly, the defendants should have raised these attacks at the latest in the reply to the counterclaim if they had exercised due diligence (for rejection even in the case of the first submission of the counterclaim).
[...] The essential arguments must be introduced into the proceedings as early as possible within the statutory time limits. Strategic tactics aimed at achieving a surprise effect are just as alien to the Rules of Procedure as the introduction of completely new means of attack based on the statement of a merely preliminary assessment by the court at the beginning of the oral proceedings, especially since this is not done uniformly in the UPC."

Court of First Instance - Munich (DE) Local Division, Order dated 28/02/2025, Esko-Graphics Imaging GmbH (Case/ Registry number: App_2829/2025, ORD_3085/2025)
Example of decision on amendment of case and the reasonable diligence requirement: "3. Pursuant to R. 263.1 RoP a party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including adding a counterclaim. Any such application shall explain why such change or amendment was not included in the original pleading. The application must therefore have a certain content.
[...] 24. However, the Claimant has not satisfied the Court that, taking into account all the circumstances, the amendment could not have been made with reasonable diligence at an earlierstage, Rule 263.2 (a) RoP.
25. In this context, it is not necessary to decide whether the Defendant’s assertion that the Claimant’s patent attorney was aware of the decision of the Netherlands Patent Office in the restoration of rights proceedings as early as 21 October 2024 is correct. Nor does the Court need to decide whether the Claimant must accept that its patent attorney’s knowledge is attributable to it. Even if this were incorrect, the Claimant did not satisfy the Court that the requested amendment could not have been filed with due diligence at an earlier stage.
26. According to the Claimant’s own submissions, it became aware of the decision of the Netherlands Patent Office on 7 November 2024. Consequently, from that date onwards, it knew that the Netherlands part of the patent in suit was in force again. From that date onwards, it could and should have addressed the question, with due diligence, of whether this had consequences for the action already pending before the Local Division Munich and, if so, what consequences, . To this end, it could have sought legal advice and discussed with its (UPC) representatives whether and how the pending action could also (still) be based on the Netherlands part of the patent in suit."

Court of First Instance - Hamburg (DE) Local Division, Order dated 30/12/2024, Xiaomi Communications Co., Ltd.; Xiaomi Inc.; Xiaomi Technology Netherlands B.V.; Xiaomi Technology Germany GmbH v. Nera Innovations Ltd. (Case/ Registry number: App_62431/2024, ORD_63489/2024)
Example of decision on the admissibility of requests for amendment of claims: "The defendant’s requests for premature rejection of the plaintiff’s requests to amend the action pursuant to R. 263 of the Rules of Procedure are rejected. The substantive examination of the amendments to the patent filed by the plaintiff (R. 30 RoP) and the motions to amend the claims thereon is left to the adjudicating body in the context of the oral proceedings and the final decision.
The judge-rapporteur sees no reason to make a decision on the applicant’s auxiliary requests for amendment of the patent at this early stage of the proceedings, either alone or with the panel."

Court of Appeal - Luxembourg (LU), Order dated 23/12/2024, Suinno Mobile & AI Technologies Licensing Oy v. Microsoft Corporation (Case/ Registry number: APL_67135/2024, ORD_67910/2024)
Example of decision on reducing the amount of damages: "An unconditional application to reduce the amount of damages claimed shall be considered as an unconditional application under R 263.3 RoP. (…)
11. A party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including adding a counterclaim. Any such application shall explain why such change or amendment was not included in the original pleading (R 263.1 RoP). Furthermore, leave to limit a claim in an action unconditionally shall always be granted (R 263.3 RoP).
12. In its application filed on 10 October 2024 with the CFI, Suinno claimed a reasoned limitation of the damages sought which, as rightly pointed out by the CFI, shall be regarded as a limitation of the claim filed unconditionally under R 263.3 RoP."

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 26/11/2024, Suinno Mobile & AI Technologies Licensing Oy (Case/ Registry number: App_55394/2024, ORD_62739/2024)
Example of decision on leave to change the claim: "1. The reduction of the damages sought in an infringement action should be considered as a change of the claim, more precisely as a limitation of the claim, and if it is filed with due explanation and unconditionally must be granted by the Court, pursuant to Rule 263 (3) ‘RoP’."

Court of Appeal - Luxembourg (LU), Order dated 21/11/2024, OrthoApnea S.L., Vivisol B BV v. *** (Case/ Registry number: APL_44633/2024, ORD_58904/2024)
Example of decision on leave for change of a claim or amendment of a case: "Not every new argument constitutes an “amendment of a case” requiring a party to apply for leave under R. 263 RoP. An amendment of a case occurs when the nature or scope of the dispute changes. For example, in an infringement case, this occurs if the plaintiff invokes a different patent or objects to a different product."

Court of Appeal - Luxembourg (LU), Order dated 24/09/2024, Guangdong OPPO Mobile Telecommunications Corp. Ltd., OROPE Germany GmbH v. Panasonic Holdings Corporation (Case/ Registry number: APL_32350/2024, ORD_48655/2024)
Example of decision on changed claims: "1. Pursuant R. 263 RoP, a party may only be authorized, by the Court, to change its claims, on the twofold condition that the amendment could not have been made with reasonable diligence at an earlier stage of the proceedings and that it is not such as to disturb in an unreasonable way the conduct of the case.
2. The autorisation given by the Court, under rule R. 263 RdP, only concerns changed claims which have the effect of changing the subject matter and the scope of the dispute.
3. Changed claims that only complete those previously made do not constitute substantial modifications, which are likely to modify and affect the subject matter and the scope of the dispute and only relate to the implementation and enforcement modalities of a possible sentence."

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 02/08/2024, FUJIFILM Corporation v. Kodak Graphic Communications GmbH, Kodak Holding GmbH, Kodak GmbH (Case/ Registry number: UPC_CFI_355/2023, ORD_40822/2024)
Example of decision on the leave to change claims: "If auxiliary requests filed in the context of an application for amendment of the patent are to be amended later, the scope of R. 263 RoP is not open from the outset. The conditions under which applications for amendment of the patent are admissible are laid down in R. 30 RoP."

Court of Appeal - Luxembourg (LU), Order dated 11/03/2024, NETGEAR Deutschland GmbH, Netgear International Limited, Netgear Inc./ Huawei Technologies Co. Ltd (Registry number: APL_5395/2024 ORD_13028/2024 and ORD_13025/2024)
Example of decision on time limit for the defence after the admissibility of the amendment or extension of the action: “ 9. According to the Court of Appeal, given the absence of a specific rule in the Rules of Procedure or the Convention and the lack of clarity of the order of the Judge-Rapporteur as to the starting date of the time limit for the statement of defence in these particular circumstances - where there was insufficient clarity as to the starting date of the time limit for the statement of defence against the amendment - the panel of the Court of First Instance should not have taken the earlier date of the Judge-Rapporteur’s order as the starting date of the time limit, but the date of service of its own order.“

Court of First Instance - Paris (FR) Central Division - Seat, Order dated 28/02/2024, Meril Italy srl (Registry number: App_7184/2024 ORD_7283/2024)
Example of decision on language of proceedings: “21. This Rule states that ‘A party may at any stage of the proceedings apply to the Court for leave to change its claim or to amend its case, including adding a counterclaim. Any such application shall explain why such change or amendment was not included in the original pleading’ (para 1), adding that leave shall not be granted, unless it limits a claim in an action unconditionally, if, all circumstances considered, the party seeking the amendment cannot satisfy the Court that the amendment in question could not have been made with reasonable diligence at an earlier stage and the amendment will not unreasonably hinder the other party in the conduct of its action (para 2 and 3).”

Court of First Instance - Munich (DE) Local Division, Order dated 11/12/2023, Huawei Technologies Co. Ltd ./. Netgear Inc./Netgear Deutschland GmbH/Netgear International Limited (Case number UPC_CFI_9/2023, ORD_587438/2023)
Example of decision on the admissibility of the extension of the action to claims arising from another action patent after the closure of a limitation procedure: “The court is also convinced that the amendment does not unreasonably hinder the other party in its conduct of the proceedings. A certain degree of obstruction does not preclude admission under the law. Furthermore, in the case of the joint management of both patents within the same infringement proceedings, the court is obliged to grant the defendant largely the same defence options with regard to the second patent. 5 as in the case of a new, further action. This can be done by granting or extending deadlines for comments. If the subject matter of the extension of the action is separated, this would even be simplified. The parties will be heard in a separate workflow on the question of whether the subject matter of the extension of the claim can or should be separated.”