Kunststoff v Hafele (UPC 526/2024)
Decision date:
18 April 2025
Osborne Clarke summary
- This was a procedural order in a revocation action. As well as defending the revocation action, Hafele filed 40 sets of auxiliary requests to amend its patent in two alternative forms, so 80 in total.
- Pursuant to Rule 50.2 RoP in connection with Rules 30.1 and 30.2 RoP, conditional proposals to amend the patent must be reasonable in number given the circumstances of the case. The Munich CD considered that the number of auxiliary requests was not reasonable in the circumstances and made it unreasonably difficult for the claimant to focus its arguments.
- The court considered that although the RoP are clear in that the proposed amendments must be reasonable, the resultant sanction for non-compliance is not made explicit. It held that it would be unreasonable and too far-reaching – also in view of Article 65(3) UPCA – to reject the application to amend altogether. Instead, it stated that it would deal with the auxiliary requests in the order they had been submitted until a reasonable number had been reached.
- In view of the circumstances of this case, which included the number of validity attacks on the patent and the technology involved, up to 10 auxiliary requests would most likely still be considered reasonable by the court.
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.