The UPC and its hardline stance on late filing

/in

All reasonably available evidence and arguments should be submitted as early as possible. Submitting prior art and arguments based on it at a later stage risks their rejection. Early investment is essential; the respective initial pleadings in the proceedings should be as airtight as possible.

In a decision of 7 March 2025 (UPC_CFI_459/2023), the LD Duesseldorf held in its headnotes that

“Strategic maneuvering aimed at achieving surprise effects is foreign to the rules of procedure”

and thus rejected new invalidity attacks that had only been raised in the respective oral hearing.
While such maneuvering was not uncommon in, for example, national German patent litigation, the UPC has already gone beyond such tame limitations, and has shaped the RoP via interpretation in a way that can only be described as “front loaded” in litigation speak, a term that is also expressively used in the case law of the CoA itself, see e.g. headnotes of CoA, order of 18 September 2024, UPC_CoA_264/2024 et al.
Meaning, that parties should not only abstain from raising entirely new arguments in the oral hearing, but arguments should instead be raised as early as possible. Such an approach ensures that the lines of argumentation in the course of a proceeding take the shape of a pyramid – becoming ever more focused on the contentious issues – rather than that of a branched tree, which was not too seldom the case in for example national German litigation.

General guidelines

While this approach is generally very reasonable in light of the aim of procedural efficiency, its application in practice can create headaches for parties and their representatives about what to search for and what to include in their first submissions. Since the details are far from being resolved, the general takeaway is

• Evidence for infringement, that was or could have been made available at the time of filing the statement of claim, risks being rejected if introduced later
• As far as infringement of a dependent claim could be argued, this should be done in the statement of claim
• In case there is already pre-trial exchange of the parties on infringement, evidence, validity, claim construction, prior art etc., this exchange should be fully included and also addressed in the statement of claim
• This also means, that in the absence of such pre-trial exchange, not every conceivable line of claim construction must be presented in the statement of claim, but a short description of the parts of the patent specification and the drawings which support the claimant’s claim construction
• Likewise, not every conceivable evidence must be presented, but every alleged fact should be supported by at least one piece of evidence, and may it just be a written testimony by the party
• The statement of defense must address all arguments, and all reasonably conceivable counterarguments should be included, with the weaker ones at least in a skeleton form
• This also applies to the counterclaim for revocation: all reasonably conceivable combinations of prior art for attacking inventive step should be included, with the weaker ones at least in skeleton form. Dependent claims should also be attacked, as far as possible
• All prior art than can be found, must be found!

The latter point cannot be stressed enough. In a recent order, the CoA confirmed a first instance decision that had rejected an application to amend a counterclaim for revocation, which was filed two days after the counterclaim. The counterclaimant had become aware of additional prior art, that a service provider tasked with researching prior art had seemingly overlooked, as this prior art popped up in an unrelated search of the counterclaimants patent attorney, which however used the same search string as the service provider (2 September 2025, UPC_CoA_807/2025).

Conclusion

This means that when properly researching prior art, not only should a reliable and able external service provider be commissioned, but its results should be double- and crosschecked by attorneys, if the budget allows. This further means that arguments that an external service provider did insufficient work and thus not being initially aware of certain prior art is not the fault of the respective party will likely not be heard, and that therefore not only the general quality of the provider should be considered, but also whether useful prior art might be found in specific domains (i.e. East Asian countries, academic publications) where different service providers might have the edge.

Lastly, this front-loaded approach means for claimants, that when the UPC or a national forum would both be available, specifically the German courts, and at least initial investment in the proceedings shall be on the lower side, the German courts might be more suitable, in order not to risk that a case is lost not because it had no merit, but because the investment could not match the front loading requirements of the UPC.