UPC Legal Compass: Is there a limitation for the number of auxiliary requests filed in UPC revocation proceedings?

In revocation proceedings before the Unified patent Court (UPC), it is a key question for the patent proprietor how many auxiliary requests it may file in defense to the validity attack(s) of the plaintiff. While the number of auxiliary requests has been less relevant in German nullity proceedings and at least in almost all cases also in EPO opposition cases, Rule 30.1(c) of the Rules of Procedure answers this question by stating that proposed conditional amendments of the patent claims must be “reasonable in number in the circumstances of the case”.

Therefore, the question how many “tries” the patent owner has to find a patentable claim becomes more relevant. In the meantime, quite a couple of first-instance decisions of the UPC have dealt with this question and established some guidelines on how to determine the “reasonable number”.

According to said case law, the “reasonable number” of auxiliary requests is determined by weighing all relevant circumstances of the case and the interests of the parties (c.f. LD Munich, UPC CFI, 526/2024).

• The courts particularly take into account the scope of the (counter)claim for revocation, whereby the courts consider the complexity of the case (e.g. number of validity attacks, technology), the importance of the patent at issue and the interrelationship with other proceedings (judicial and administrative). Further, the way of presentation and structure of the auxiliary requests is relevant although there is no general rule that requires “convergence” of auxiliary requests in UPC proceedings (c.f. CD Paris, UPC CFI 255/2023 and 15/2023; LD Munich, UPC CFI 298/2023). This means that focusing its arguments against the auxiliary requests by the other party as well as the preparation of the oral hearing by the court must not be made unreasonably difficult by the number of auxiliary requests and the way of their presentation (c.f LD Munich, UPC CFI, 526/2024).
• One specific relevant circumstance is a parallel proceeding before the EPO. Auxiliary requests filed in such proceedings can be admitted into the parallel UPC revocation proceedings. Therefore, the “reasonable number” might ultimately only be determined once the decision of the EPO has been issued (c.f. LD Munich, UPC CFI 298/2023).

Based on the above standard and criteria, courts determined – according to the individual case – the number of 55 (ultimate number depending on pending EPO proceedings), 84, and 12 auxiliary requests to be a “reasonable number” (c.f. LD Munich, UPC CFI 298/2023; CD Paris, UPC CFI 255/2023 and 15/2023; CD Paris, UPC CFI 316/2023). However, under different circumstances 80 auxiliary requests has been considered being unreasonable (c.f. LD Munich, UPC CFI 526/2024).

In this context it is also interesting that the “reasonable number” of auxiliary requests may have an impact on the deadline for the response to these requests, whereby the extent to which the parties have already had the opportunity to respond to the arguments of the other party before the EPO will be taken into account (c.f. LD Munich, UPC CFI 298/2023).

Overall, there is further guidance necessary from the UPC with respect to the criteria of how many auxiliary requests will be admitted. It is however imminent that the will not be any abstract number of “reasonable” requests but the number admitted will always depend on the circumstances of the case.