UPC Court of Appeal's first decision extends time limits for filing the Preliminary Objection and the Statement of Defence in some cases

 UPC Court of Appeal (source: UPC official website)
The Court of Appeal of the Unified Patent Court (UPC) has issued its first order (the Court later provided an English translation). Unsurprisingly, given the UPC system only started from 1 June this year the first appellate order relates to a procedural issue rather than anything on the substantive merits of the case. Like the decisions from the Boards of Appeal of the European Patent Office the UPC Court of Appeal order contains headnotes which rather nicely summarise what has been decided, but it is just as important to go a bit deeper to see the reasoning behind. So, on we go....


In one case between Sanofi and Amgen, Amgen did not upload onto the Case Management System some annexes to their Statement of Claim. The question was first - what is the date of service of the Statement of Claim -  and secondly - what are the time limits of reply.

Date of service

According to Article 24(a)(1) of the Agreement on a Unified Patent Court, the UPC bases its decisions first on Union law. The UPC Rules of Procedure must therefore be interpreted in light of the EU Regulation 2020/1784 on the service of documents and the settled case-law ([5]). Annexes that have only an evidentiary function and are not indispensable for understanding subject-matter and the reason of the claim are not an integral part of the claim ([6]).

The interpretation of the UPC Rules of Procedure also supports this conclusion. The content of the Statement of Claim is exhaustively listed in Rule 13.1. Rule 13.2 requires that a copy of each of the documents referred to in the Statement of Claim is attached. It follows that these documents are not considered to be part of the Statement of Claim ([11]).

The Court of Appeal therefore agreed with the decision below that the fact that the annexes were not served on Sanofi together with the Statement of Claim is irrelevant for deciding the date of service ([14]).

Request for extending the time limits

Under Rule 19.1 of the Rules of Procedure, within one month of service of the Statement of Claim, the defendant may lodge a Preliminary Objection. Under Rule 23, The defendant shall lodge a Statement of Defence within three months of service of the Statement of Claim. The courts below rejected Sanofi’s request for extending the time limits, because most of the annexes were already available to Sanofi. The remaining annexes are publicly available or reproduced in the Statement of claim ([17]).

The Court of Appeal considered that this question turned on the interpretation of Rule 13.2 which states that ‘The claimant shall at the same time supply a copy of each of the documents referred to in the Statement of claim.’ ([18]). Rules 4 and 271 ensure that the defendant can access the annexes immediately after service of the Statement of claim so that they have the full month to prepare the Preliminary objection or three months to prepare the defence under Rules 19.1 and 23 ([20] – [21]).

Rule 13.2 serves a different purpose than the Service Regulation. While the latter makes sure that the defendant can provide the defence in a timely manner by appointing a representative, the former allows them to respond to all the submissions and all the annexes ([23] – [25]).

Given the purpose of Rule 13.2, a request by a defendant to extend the time limits for filing an Objection and the Statement of Defence mentioned in Rules 19.1 and 23 must be granted if a claimant has not uploaded the annexes to the Case Management System at the same time as the Statement of Claim. The nature and/or the content of the annexes is irrelevant ([28]): compliance with Rule 13.2 is under formal requirements examination under Rule 16.2 ([26]). These formal requirements can be easily and objectively reviewed without knowledge of the content. This shows that compliance with Rule 13.2 is not intended to depend on the nature or the content of the non-filed annexes ([29]). Also, even if certain documents are already known to the defendant or generally accessible, it is important to know which particular document the claimant is referring to and its exact content ([29]).

Moreover, Rule 16.5 indicates that a judge may dismiss an action (including non-compliance with Rule 13.2) as inadmissible, and Rule 9.2 specifies that the tribunal may disregard documents not filed within time limits, but when the court exercises its discretion it must follow the general principles of fairness and equity when a party requests extending the time limits ([27]). Further, it is inequitable to place the burden of proving the relevance of the annexes on the defendant when the reason for requesting the time limit extension is the claimant’s failure to comply with Rule 13.2 ([30]).

The court held that except for special circumstances, the time limits in Rules 19.1 and 23 should be extended by the period during which the annexes were not available ([32]).

Consequently the Court of Appeal overturned the related conclusion under appeal and allowed the extension of time limits.


In this Kat’s view these are uncontroversial conclusions reached by the Court of Appeal both through statutory interpretation and general principles of equity. The claimant would therefore not be able to apply additional time pressure on the defendant by not uploading the annexes to the Statement of Claim. This Kat will keep an eye on future UPC decisions from Luxembourg, in particular any divergence between the UPC and the national tribunals and the Boards of Appeal of the European Patent Office.

UPC Court of Appeal's first decision extends time limits for filing the Preliminary Objection and the Statement of Defence in some cases UPC Court of Appeal's first decision extends time limits for filing the Preliminary Objection and the Statement of Defence in some cases Reviewed by Henry P Yang on Thursday, October 19, 2023 Rating: 5

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