In its judgment of 20 February 2025 (the “Judgment”), the Brussels Local Division has highlighted the pitfalls of non-compliance with the Rules of Procedure of the Unified Patent Court (“RoP”), while also providing an example of when minimal departure from RoP may be permissible.
Background
Cretes NV (“Cretes”) is the plaintiff in infringement proceedings and the defendant in the invalidity counterclaim. Hyler BV (“Hyler”) is the defendant in the infringement proceedings and the plaintiff in the invalidity counterclaim. By way of procedural order dated 7 October 2024, the Brussels Local Division (LD) informed the parties that the date of the Statement of Defence (16 September 2024) would be considered decisive for the time limits of the proceedings and requested the parties’ positions on streamlining the infringement and invalidity proceedings. Letters sent by the parties to the Brussels LD on 26 October 2024 are quoted in the Judgment and confirm the parties’ agreement to the decisiveness of the date of the Statement of Defence.
Thereafter, the parties made the following filings via CMS:
• 15 November 2024 – Reply to the Statement of Defence (Cretes)
• 22 November 2024 – Defence to the Counterclaim for Revocation (Cretes)
• 16 January 2025 – Rejoinder to the Reply to the Statement of Defence (Hyler)
• 16 January 2025 – Reply to the Defence to the Counterclaim for Revocation (Hyler)
Application
On 11 February 2025, Cretes sought the following:
• the removal of the Rejoinder to the Reply to the Statement of Defence and the Reply to the Defence to the Counterclaim for Revocation, stating that they were filed one day late, i.e. on 16 January 2025 instead of 15 January 2025;
• in the alternative, the removal of certain paragraphs of Hyler’s Rejoinder to the Reply to the Statement of Defence and Reply to the Defence to the Counterclaim for Revocation for reason of new non-infringement arguments, the addition of a new document and a new claim for a declaration of non-infringement; and
• permission to deliver an additional pleading as an “additional response option” in order to protect the rights of the defence. This application was based on the application of R.36 RoP.
Applicable Law
The additional document Hyler sought to introduce contained proposed changes to its allegedly infringing product. It sought to use these proposed changes as a basis for a claim for a declaration of non-infringement. R.263 RoP governs leave to change a claim or amend a case. However, the correct procedure set out in R.263 was not followed by Hyler in that it did not submit an application to the Brussels LD for leave to change its claim or amend its case before submitting its Rejoinder and Reply. Furthermore, Hyler was unable to convince the Brussels Court that this application could not have been brought earlier “with reasonable diligence”.
Ruling
With respect to Cretes’ application in relation to Hyler’s alleged missed deadline, the Court held that while parties generally cannot depart from the procedural deadlines set in the Rules of Procedure by mutual agreement, minor deviations may be accepted by the Court. Such was the case here, where the Court found that, based on the correspondence exchanged between the parties, it was clear that they had agreed 16 January 2025 as the deadline. Therefore, Cretes primary request was refused by the Court.
Conversely, for reason of non-compliance with R.263 RoP, the Court rejected Hyler’s amended claim and its proposed new document. Consequently, Hyler’s new non-infringement arguments were also rejected by the Court.
Cretes request for an additional period of one week to respond to Hyler’s new non-infringement argument and claim was deemed devoid of purpose in circumstances where the Court had refused to consider the proposed amendments to Hyler’s case and its additional claims.
Commentary
This decision serves as a lesson in the value of goodwill. While deadlines exist for a reason, circumstances will inevitably arise where parties will need to apply to the Court for a retroactive extension for any number of reasons. Courtesy between parties engaged in UPC litigation therefore benefit the system, reducing delays and encouraging procedural efficiency. In particular, when making an application, the basis for which is an alleged missed deadline, parties should be prepared for their correspondence to by analysed by the Court.
While acknowledging that this is an unusual thing for a Court to do, the Court held that it was obliged to place weight on the confidential correspondence between the parties when making its decision in relation to the alleged missed deadline. The Court held that in the absence of a competent President of the Bar and / or Bar Association at UPC level to make a decision on the agreements made between its members on the basis of confidential correspondence and a code of ethics, the Court has no choice but to take this confidential correspondence into consideration when reaching a decision. This is an interesting departure from the practice in most national courts and is something for all UPC practitioners to bear in mind when engaging in inter partes correspondence.
The order is here.
