Rule 29A – Contents of the Defence to the Counterclaim

The Defence to the Counterclaim for revocation shall contain:

(a) an indication of the facts relied on, including any challenge to the facts relied on by the defendant;

(b) the evidence relied on [Rule 170.1], where available, and an indication of any further evidence which will be offered in support;

(c) the reasons why the Counterclaim for revocation shall fail, including arguments of law and any argument as to why any dependent claim of the patent is independently valid;

(d) an indication of any order the claimant and the proprietor will seek in respect of the revocation action at the interim conference [Rule 104(e)];

(e) the claimant’s and the proprietor’s response to the defendant’s choice of option, if any, provided for in Article 33(3) of the Agreement and Rule 37.4; and

(f) a list of the documents, including any witness statements, referred to in the Defence to the Counterclaim together with any request that all or part of any such document shall not be translated and/or any request pursuant to Rule 262.2 or Rule 262A. Rule 13.2 and .3 shall apply mutatis mutandis.

Case Law:

IPPT20240627, UPC CFI, LD Mannheim, Panasonic v Orope
Case management order. The following information and questions have been sent to the parties by the judge-rapporteur in order to structure the further proceedings (Article 43 UPCA, Rule 9(1) RoP, Rule 101(1) RoP).  In the Defence to the counterclaim for revocation, the patent proprietor must base his argumentation on specific features of the patent claim (Rule 29A RoP). The plaintiff's statements in the reply to the counterclaim are not clearly recognisable in relation to the individual features - this must be made up for. It is insufficient to deal with the defendant's arguments without a clear reference to the features of the asserted claim, without it being clearly recognisable why a specific feature of the claim is not covered by the prior art disclosure.