Rules of procedure with commentary
UPC Agreement
UPC Statute
Mediation and Arbitration Rules
Other documents

PREAMBLE
- PREAMBLE -
Rules 1 to 9 - APPLICATION AND INTERPRETATION OF THE RULES
Rules 10 to 159 - PART 1 - PROCEDURES BEFORE THE COURT OF FIRST INSTANCE
- Rules 12 to 98 - CHAPTER 1 - WRITTEN PROCEDURE
  - Rules 12 to 41 - SECTION 1 - INFRINGEMENT ACTION
    - Rule 12 - Exchange of written pleadings (infringement action)
    - Rule 12 - Commentary
    - Rules 13 to 18 - STATEMENT OF CLAIM
    - Rules 19 to 21 - PROCEDURE WHEN THE DEFENDANT RAISES A PRELIMINARY OBJECTION
    - Rule 22 - VALUE-BASED FEE FOR THE INFRINGEMENT ACTION
      - Rule 22 - Determination of value-based fee for the infringement action
    - Rules 23 to 28 - STATEMENT OF DEFENCE
    - Rules 29 to 30 - DEFENCE TO THE COUNTERCLAIM FOR REVOCATION, REPLY TO THE STATEMENT OF THE DEFENCE AND APPLICATION TO AMEND THE PATENT AND REJOINDER TO THE REPLY
    - Rule 32 - DEFENCE TO THE APPLICATION TO AMEND THE PATENT
      - Rule 32 - Lodging of the Defence to the Application to amend the patent, the Reply to the Defence and the Rejoinder to the Reply
    - Rules 33 to 34 - APPLICATION FOR ALLOCATING A TECHNICALLY QUALIFIED JUDGE TO THE PANEL
      - Rule 33 - Application by a party for allocating a technically qualified judge
      - Rule 34 - Request by the judge-rapporteur for allocating a technically qualified judge
    - Rules 35 to 37 - LAST STEPS IN THE WRITTEN PROCEDURE
    - Rules 38 to 40 - COUNTERCLAIM FOR REVOCATION REFERRED TO THE CENTRAL DIVISION UNDER ARTICLE 33(3)(B) OF THE AGREEMENT
    - Rule 41 - ACTION REFERRED TO THE CENTRAL DIVISION UNDER ARTICLE 33(3)(C) OF THE AGREEMENT
      - Rule 41 - Written procedure when the central division deals with the action under Article 33(3)(c) of the Agreement
  - Rules 42 to 60 - SECTION 2 - REVOCATION ACTION
    - Rule 42 - Action to be directed against the patent proprietor
    - Rule 43 - Exchange of written pleadings (revocation action)
    - Rules 44 to 48 - STATEMENT FOR REVOCATION
    - Rules 49 to 54 - DEFENCE TO REVOCATION
    - Rules 55 to 60 - DEFENCE TO THE APPLICATION TO AMEND THE PATENT AND DEFENCE TO THE COUNTERCLAIM FOR INFRINGEMENT
  - Rules 61 to 74 - SECTION 3 – ACTION FOR DECLARATION OF NON-INFRINGEMENT
  - Rules 75 to 77 - SECTION 4 - ACTIONS WITHIN ARTICLE 33(5) AND (6) OF THE AGREEMENT
  - Rule 80 - SECTION 5 – ACTION FOR COMPENSATION FOR LICENCES ON THE BASIS OF ARTICLE 8 OF REGULATION (EU) No 1257/2012
    - Rule 80 - Compensation for a licence of right
  - Rules 85 to 98 - SECTION 6 – ACTION AGAINST DECISIONS OF THE EUROPEAN PATENT OFFICE IN CARRYING OUT THE TASKS REFERRED TO IN ARTICLE 9 OF REGULATION (EU) No 1257/2012
- Rules 101 to 110 - CHAPTER 2 – INTERIM PROCEDURE
  - Rules 104 to 106 - INTERIM CONFERENCE
  - Rules 108 to 110 - PREPARATION FOR THE ORAL HEARING
- Rules 111 to 119 - CHAPTER 3 – ORAL PROCEDURE
- Rules 125 to 144 - CHAPTER 4 – PROCEDURE FOR THE DTERMINATION OF DAMAGES AND COMPENSATION
  - Rule 125 - Separate proceedings for determining the amount of damages ordered
  - Rule 126 - Start of proceedings for the determination of damages
  - Rules 131 to 140 - SECTION 1 – APPLICATION FOR THE DETERMINATION OF DAMAGES
  - Rules 141 to 144 - SECTION 2 – REQUEST TO LAY OPEN BOOKS
- Rules 150 to 157 - CHAPTER 5 – PROCEDURE FOR COST DECISION
- Rules 158 to 159 - CHAPTER 6 – SECURITY FOR COST
  - Rule 158 - Security for costs of a party
  - Rule 159 - Security for costs of the Court
Rules 170 to 202 - PART 2 - EVIDENCE
- Rules 175 to 181 - CHAPTER 1 - WITNESSES AND EXPERTS OF THE PARTIES
- Rules 185 to 188 - CHAPTER 2 - COURT EXPERTS
- Rules 190 to 191 - CHAPTER 3 - ORDER TO PRODUCE EVIDENCE AND TO COMMUNICATE INFORMATION
  - Rule 190 - ORDER TO PRODUCE EVIDENCE
    - Rule 190 - Order to produce evidence
  - Rule 191 - ORDER TO COMMUNICATE INFORMATION
    - Rule 191 - Application for order to communicate information
- Rules 192 to 199 - CHAPTER 4 – ORDER TO PRESERVE EVIDENCE (SAISIE) AND ORDER FOR INSPECTION
  - Rules 192 to 198 - ORDER TO PRESERVE EVIDENCE (SAISIE)
  - Rule 199 - ORDER FOR INSPECTION
    - Rule 199 - Order for inspection
    - Rule 199 - Commentary
- Rules 200 to 202 - CHAPTER 5 - OTHER EVIDENCE
  - Rule 200 - Order to freeze assets
  - Rule 201 - Experiments ordered by the Court
Rules 205 to 213 - PART 3 - PROVISIONAL MEASURES
Rules 220 to 255 - PART 4 – PROCEDURES BEFORE THE COURT OF APPEAL
- Rules 224 to 238A - CHAPTER 1 - WRITTEN PROCEDURE
  - Rules 224 to 234 - SECTION 1 — STATEMENT OF APPEAL, STATEMENT OF GROUNDS OF APPEAL
  - Rules 235 to 237 - SECTION 2 – STATEMENT OF RESPONSE
  - Rule 238 - SECTION 3 – REPLY TO A STATEMENT OF CROSS-APPEAL
    - Rule 238 - Reply to a Statement of cross-appeal and further schedule
  - Rule 238A - SECTION 4 – REFERRAL TO THE FULL COURT
    - Rule 238A - The panel to which the action has been...
- Rule 239 - CHAPTER 2 – INTERIM PROCEDURE
  - Rule 239 - Role of the judge-rapporteur
- Rules 240 to 241 - CHAPTER 3 – ORAL PROCEDURE
  - Rule 240 - Conduct of the oral hearing
  - Rule 241 - Conduct of the oral hearing for an appeal of a cost decision
- Rules 242 to 243 - CHAPTER 4 – DECISIONS AND EFFECT OF DECISIONS
  - Rule 242 - Decision of the Court of Appeal
  - Rule 243 - Referral back
- Rules 245 to 255 - CHAPTER 5 – PROCEDURE FOR APPLICATION FOR REHEARING
Rules 260 to 365 - PART 5 – GENERAL PROVISIONS
- Rules 260 to 267 - CHAPTER 1 – GENERAL PROCEDURAL PROVISIONS
- Rules 270 to 279 - CHAPTER 2 – SERVICE
  - Rules 270 to 272 - SECTION 1 – SERVICE WITHIN THE CONTRACTING MEMBER STATES
  - Rules 273 to 274 - SECTION 2 – SERVICE OUTSIDE THE CONTRACTING MEMBER STATES
    - Rule 273 - Scope of this Section
    - Rule 274 - Service outside the Contracting Member States
  - Rule 275 - SECTION 3 – SERVICE BY AN ALTERNATIVE METHOD
    - Rule 275 - Service of the Statement of claim by an alternative method or at an alternative place
  - Rules 276 to 279 - SECTION 4 – SERVICE OF ORDERS, DECISIONS AND WRITTEN PLEADINGS
- Rules 284 to 294 - CHAPTER 3 – RIGHTS AND OBLIGATIONS OF REPRESENTATIVES
- Rules 295 to 298 - CHAPTER 4 – STAY OF PROCEEDINGS
- Rules 300 to 301 - CHAPTER 5 – TIME PERIODS
  - Rule 300 - Calculation of periods
  - Rule 301 - Automatic extension of periods
- Rules 302 to 320 - CHAPTER 6 — PARTIES TO PROCEEDINGS
  - Rules 302 to 303 - SECTION 1 — PLURALITY OF PARTIES
    - Rule 302 - Plurality of claimants or patents
    - Rule 303 - Plurality of defendants
  - Rules 305 to 306 - SECTION 2 — CHANGE IN PARTIES
    - Rule 305 - Change in parties
    - Rule 306 - Consequences for the proceedings
  - Rules 310 to 311 - SECTION 3 – DEATH, DEMISE OR INSOLVENCY OF A PARTY
    - Rule 310 - Death or demise of a party
    - Rule 311 - Insolvency of a party
  - Rule 312 - SECTION 4 – TRANSFER OF PATENT
    - Rule 312 - Transfer of the patent or patent application during proceedings
  - Rules 313 to 317 - SECTION 5 – INTERVENTION
  - Rule 320 - SECTION 6 – RE-ESTABLISHMENT OF RIGHTS
    - Rule 320 - Re-establishment of rights
- Rules 321 to 324 - CHAPTER 7 – MISCELLANEOUS PROVISIONS ON LANGUAGES
- Rules 331 to 340 - CHAPTER 8 – CASE MANAGEMENT
- Rules 341 to 346 - CHAPTER 9 – RULES RELATING TO THE ORGANISATION OF THE COURT
- Rules 350 to 354 - CHAPTER 10 – DECISIONS AND ORDERS
- Rules 355 to 357 - CHAPTER 11 – DECISION BY DEFAULT
- Rules 360 to 363 - CHAPTER 12 – ACTIONS BOUND TO FAIL OR MANIFESTLY INADMISSIBLE
- Rule 365 - CHAPTER 13 – SETTLEMENT
  - Rule 365 - Confirmation by the Court of a settlement
Rules 370 to 382 - PART 6 – FEES AND LEGAL AID
- Rules 370 to 371 - COURT FEES
  - Rule 370 - Court fees
  - Rule 371 - Time periods for paying court fees
- Rules 375 to 382 - LEGAL AID
Court fees

- PREAMBLE -
- - Rule 370 - Court fees
  - Rule 371 - Time periods for paying court fees

Home > Rules of procedure with commentary > PART 1 - PROCEDURES BEFORE THE COURT OF FIRST INSTANCE > CHAPTER 1 - WRITTEN PROCEDURE > SECTION 1 - INFRINGEMENT ACTION > DEFENCE TO THE APPLICATION TO AMEND THE PATENT > Lodging of the Defence to the Application to amend the patent, the Reply to (...)

Version: 1 September 2022

Rule 32Lodging of the Defence to the Application to amend the patent, the Reply to the Defence and the Rejoinder to the Reply

1. Within two months of service of an Application to amend the patent, the defendant shall lodge a Defence to the Application to amend the patent setting out whether he opposes the Application to amend the patent and, if so, why:

(a) the proposed amendments are not allowable; and

(b) the patent cannot be maintained as requested.

2. Where appropriate in view of the proposed amendments, the Defence to the Application to amend the patent may contain submissions in accordance with Rule 44(d) to (h) and alternative non-infringement submissions.

3. The proprietor may lodge a Reply to the Defence to the Application to amend the patent within one month of service of the Defence and the defendant may within one month of the service of the Reply lodge a Rejoinder to the Reply. The Rejo
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