Esko v XSYS & Ors (UPC_CFI_483/2024)
Decision date:
28 February 2025
Osborne Clarke summary
- Esko brought a claim for patent infringement against XSYS. Its claim initially excluded the Netherlands due to the national patent's lapse for non-payment of fees. The patent was subsequently restored and Esko sought an order to amend its infringement claim to include the Netherlands.
- Meanwhile, XSYS filed a counterclaim for revocation, which included the Netherlands, and opposed Esko's request to amend its case, arguing that the amendment could have been made earlier with reasonable diligence.
- The court interpreted Rule 263.2 RoP as providing strict requirements for refusing applications to amend a claim. Rules 263.2(a) and (b) RoP are cumulative requirements, which, if not met, mean that the court must refuse the application. It has no discretion in this regard.
- The court rejected Esko's application to amend its case, as it failed to provide a convincing reason for the delay in filing the amendment application. From the date on which it became aware of the restoration of the Dutch patent, it could and should have addressed the question of whether it needed to amend its case. Instead, Esko's request was not filed for over two months from the time of the restoration and after XSYS' deadline to file its statement of defence. On this basis, Esko failed to satisfy Rule 263.2(a) RoP as the court held that the amendment application could have been made at an earlier stage.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.