CASELAW-UPC – reviews of UPC decisions

Order LD Mannheim UPC_CFI_ 210/2023 – Is there a conflict between RoP 30 UPC and Art 105a EPC?

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EP 2 568 724 relates to a “Radio Communication Device and Radio Communication Method”

Brief outline of the case

The claimant has introduced an infringement action before the CFI LD Mannheim.

A counterclaim for revocation has been filed by the alleged infringer.

The chairman and rapporteur has issued an order relating to the procedure, the technology and FRAND counterclaims.

The order is interesting in that it refers to RoP 30 UPC.

RoP 30 UPC

According to RoP 30.1 UPC, the Defence to the Counterclaim for revocation may include an Application by the proprietor of the patent to amend the patent and enounces conditions to be fulfilled.

According to RoP 30.2 UPC, any subsequent request to amend the patent may only be admitted into the proceedings with the permission of the Court.

The considerations of the LD Mannheim under RoP 30.2 UPC

According to the rule, it should be avoided that the proprietor, by successively filing various amendments, takes away the opposite party the possibility to react at an early stage and hinders the court to properly deal with the requests.

In this respect, the question of the admissibility of a new amendment will depend on whether the new version of the amendment has already been submitted at an earlier stage in response to the arguments already put forward in the counterclaim and whether the late request for amendment will delay the proceedings.

This position has already been taken by the Paris Section of the CD in the order UPC_CFI_255/2023 of 27.02.2024.

The unqualified reservation by the proprietor to respond with further amendments in due course met therefore with reservations and any new amendments will have to be measured against the above requirements.

Art 105a EPC

According to Art 105a(1), the proprietor can request limitation (or revocation) of the European patent.

According to Art 105a(2), the request may not be filed while opposition proceedings in respect of the European patent are pending.


I could not find any reference in the EPC to any prohibition for filing a request for limitation in case of actions pending before a national court, or now before the UPC.

The only effect on national law are to be found in Art 138 EPC (Revocation) and 139 EPC (Prior national rights).

While would it not be possible for a proprietor to file a request for limitation before the EPO, even in case of a pending action of nullity before the UPC?


It is clear that, in case of a request for limitation, the EPO will not check the validity of the amended claims, but this is not a reason for forbidding a proprietor to seek limitation of its patent as the EPO.

After all a European patent is an asset of the proprietor. Why should he be limited in the way it disposes of its asset?

I remember one decision of a Spanish court refusing a further amendment to a patent without authorisation before the same court. I could, alas, not find it rapidly.

The three level of convergence according to the valid RPBA also limit the possibility of the proprietor to amend its claims, but this is within the EPC and its application by the EPO  and the boards of appeal.  

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