Article

Amendments in UPC proceedings: current developments and practical guidelines

Amendments in UPC proceedings: current developments and practical guidelines
Published Date
May 16 2025
Recent decisions from various UPC divisions provide valuable guidance for parties seeking to amend their cases or patents. The decisions emphasize that it is crucial for parties to know how to distinguish between the rules for amending patents and patent actions, as each has its own requirements and scope. This will enable them to file proper applications and to make strategic decisions to defend their patent rights as effectively as possible.

Legal framework

Amendments to the case: Under R. 263.1 of the Rules of Procedure (RoP), a party may, at any point during the proceedings, request the Court’s permission to alter its claim or amend its case, which may include the addition of a counterclaim. The rule is primarily concerned with ensuring that late or unclear amendments to a case do not unduly hinder the other party in its defense.

Patent amendments: Under R. 30.1 RoP, the patent proprietor may defend their patent in an amended version against a counterclaim for revocation. In addition to Art. 76 UPCA, R. 30 RoP specifies what requirements a patent holder needs to meet in order to file a clear and comprehensive application to amend the patent.

Recent amendment cases

In JingAo/Astroenergy (March 31,2025, UPC_CFI_425/2024), the Munich Local Division, in accordance with R. 30 RoP and R. 263 RoP, granted all of the claimants’ requested changes, including patent amendments in light of an EPO opposition decision, and the addition of new versions of allegedly infringing products discovered after the initial filing.

In Supponor/AIM Sport (April 11, 2025, UPC_CoA_169/2025), the Court of Appeal (CoA) allowed the addition of a new defendant, territorial extension, and amendments to the infringement action on the basis of R. 263 RoP.

In Fujifilm/Kodak (April 2, 2025, UPC_CFI_359/2023 and UPC_CFI_365/2023), the Mannheim Local Division, taking into account both provisions, permitted clarifying amendments to the claims but refused implicit patent amendments, emphasizing the need for a proper, formal application.

Practical guidelines from these cases

Based on these decisions, the practical guidelines can be summarized as follows.

DetailsClaim amendments (R. 263 RoP)Claim amendments (R. 263 RoP)
What is covered?
  • “Any change to the subject-matter of the claims” → changes in the wording of a claim, relying on a combination of claims as new independent claim, etc.
  • No need for changes to be limited to addressing directly the grounds for invalidity asserted in the counterclaim.
  • Introduction of claim versions amended by the EPO to help synchronize its proceedings with those before the UPC.
  • Amendments of the case due to lack of specificity and changes to the content of the claim → when the nature or scope of the dispute changes (eg extended territorial scope and introduction of counterclaim).
  • When dependent patent claims are included in auxiliary requests under Rule 30 RoP, the patentee must also be able to amend the infringement action accordingly in order to improve synchronization of proceedings before both the UPC and EPO.
  • Amendments to the infringement action, respectively the patent, requested in relation to the statement of defense and the counterclaim for revocation should be regarded, at least in case of doubt, as an implied request pursuant to Rule 263 RoP and should be allowed accordingly.
  • Amendments in response to concerns raised by the Court, if the lack of specificity and the amendment responding to it would concern the substance of the request, would have to be admissible on a regular basis if it does not unduly hinder the defense of the defendant.
What isn’t covered?
  • Informal or implied amendments, such as mere elaboration on the patentability of subclaims.
  • Amendments refining the wording or procedural clarifications without altering the substantive scope.
  • The addition of infringement by equivalence, because claims are still based on the same acts and the same patent.
  • Unconditional amendments to a patent’s claim do not require a separate application or leave to amend under R. 263 RoP.
Formalities
  • Clear and comprehensive (detailed) application, reasonable number of proposed amendments.
  • Where appropriate, submit alternative sets of claims in the language in which the patent was granted (with translation, if necessary).
  • Specify the order of priority / ranking when submitting alternative / conditional amendment proposals.
  • Explain how the amendments comply with the requirements of Articles 84 and 123(2) and (3) EPC and why the amended claims are valid and considered to be infringed.
  • Explain why the change was not included in the original pleading.
  • Convince the Court that the change could not have been made any earlier in the proceedings and will not reasonably hinder the other party.
  • The details can be provided in an appendix.
  • The frontloaded nature of UPC proceedings must be protected.

Key takeaways

  • Applying the correct rule is essential for the admissibility and effectiveness of any amendment in UPC patent litigation. Therefore, it is important to know the differences between R. 30 and R. 263 RoP.
  • 263 RoP covers the lack of specificity and the amendment responding to it concerning the substance of the request, not the wording.
  • When it comes to amending the patent itself, R. 30 is lex specialis to R. 263 RoP.
  • Patent amendments need not be linked to the invalidity grounds in the counterclaim for revocation.
  • It is possible to introduce an amendment based on a decision of the EPO division, since the RoP aim to synchronize UPC proceedings with EPO proceedings.

The authors thank Laura Schnackerz for her help in drafting this article.

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