Brief summary: For the purpose of overall procedural efficiency, the UPC’s Court of First Instance has granted an extension to the deadline for a Defendant to file a statement of defence (and counterclaim for revocation) in infringement proceedings until after the date of an EPO Board of Appeal hearing in respect of one of the patents at issue. As UPC case law develops, this recent order therefore seems to support the Court’s original intentions of providing parties with a simple and efficient procedure for patent litigation in Europe. It also highlights the continued importance of EPO opposition and appeal procedure for litigious parties.
Background and decision
In a recent procedural order (order no. ORD_1495/2025 in UPC_CFI_472/2024), the Milan Local Division of the UPC’s Court of First Instance (CFI) granted a Defendant’s request for an extension based on the timing of the EPO Board of Appeal (BoA) hearing in relation to one of the patents at issue.
The case itself relates to infringement proceedings in respect of two European patents in the name of Dainese S.p.A. (Claimant), against a number of Defendants, including Alpinestars S.p.A. (Defendant 1). There are also parallel pending appeal proceedings at the EPO regarding an opposition brought by Defendant 1 against one of the European patents. The original deadline for Defendant 1 to file a statement of defence (and counterclaim for revocation) in the UPC proceedings was a few weeks before the date of the BoA hearing. Of course, if the patent is revoked by the EPO, then the Defendant’s earlier-filed response could have been made redundant.
Eleven days before the deadline, Defendant 1 filed an application under Rule 9 of the Rules of Procedure (RoP) of the UPC requesting to extend the deadline until two weeks after the BoA hearing. Defendant 1 argued, inter alia, that it would be in the interest of overall procedural efficiency (and also in the interest of the Claimant) that the extension be granted, since the BoA hearing would generally be sufficient grounds for a stay in the UPC proceedings. Moreover, it was argued that the moderate extension (of around five and a half weeks) would not contravene the overall goal to conclude the proceedings expeditiously. The hearing for the UPC proceedings had not yet been scheduled and, compared to a potential stay, granting the extension would actually result in a better position for the Claimant.
In response to the application, the Claimant requested that the Court deny the request or, if granted, extend the deadline to only one week after the BoA hearing (one month after the original deadline). The Claimant argued, inter alia, that Defendant 1 had been aware of the date of the BoA hearing for a few months, but only filed the request for extension close to the deadline for filing the statement of defence. It was also argued that if the extension was granted, then Defendant 1 would be the only party [of the UPC proceedings] in the position to properly address the decision of the BoA and to include the outcome of the EPO proceedings in its statement of defence, which would put Defendant 1 in an advantageous position over both the Claimant and the other Defendants.
In the order, the Judge-rapporteur stated that the decision took into account the principles of proportionality, flexibility and fairness as set out in Preamble 2 of the RoP. It was stated that the most efficient way to achieve the mandatory coordination between the appeal proceedings before the EPO and the proceedings before the UPC in this case would be to simply extend the time limits for filing the statement of defence and counterclaim for revocation, i.e. granting Defendant 1’s request. This allows for the UPC proceedings not to be stayed, while also waiting on the upcoming BoA decision. Having knowledge of the BoA’s decision (and having the time to examine it) was considered to guarantee the right to a full adversarial principle.
Moreover, the Court considered that the requested period of two weeks after the BoA hearing appeared to be consistent with the need to await the decision, examine it and prepare appropriate defences before the Court. After the BoA’s decision, on a reasoned request by the other parties, both the Claimant and the other Defendants may also be granted a period within which to submit their observations on the decision.
Takeaways
Positively, this demonstrates a willingness at the UPC’s CFI to take a logical and pragmatic approach to parallel UPC and EPO proceedings, striving for an efficient overall procedure taking into account the position of all parties. It is noted in this regard that the technically qualified judge is very familiar with EPO procedures, having previously served as an EPO BoA member and also been a member of the Enlarged BoA of the EPO.
The order seems to provide a sensible, flexible solution, respecting the procedural rights of all parties. While a rigorous approach may have been to simply stay the UPC proceedings in line with the patentee’s preference, which is within the power of the Court, in this case it was considered that a moderate discretionary extension would be the best approach.
As UPC case law develops, this recent order therefore seems to support the Court’s original intentions of providing parties with a simple and efficient procedure for patent litigation in Europe. It also highlights the continued importance of EPO opposition and appeal procedure for litigious parties.
Meet our UPC team.
