UPC rules on excessive number of auxiliary requests

In a recent decision (UPC_CFI_526/2024), the Unified Patent Court’s Central Division in Munich addressed the issue of excessive auxiliary requests in patent revocation proceedings. During the written proceedings, the defendant submitted 40 auxiliary requests in two alternative forms (80 in total) in an attempt to preserve the validity of the patent through conditional amendments. The Court, guided by Rules 30.1, 30.2 and 50.2 RoP, found this volume of requests excessive and unreasonable, particularly noting the limited complexity of the technology (furniture) involved in relation to the Patent.

The Court emphasized that while there is no general rule requiring “convergence” of auxiliary requests in UPC proceedings, the lack of structure and excessive numbers of combinations of features created unnecessary procedural difficulties for both the claimant and the court. Moreover, the Court clarified that multiple ongoing related proceedings do not inherently justify such a large number of auxiliary requests.

Notably, the Court stated that, in view of Article 65(3) UPCA and RoP, it would be unreasonable and too far-reaching to reject the application to amend altogether. Instead, the Court allowed the defendant to limit and/or re-order their auxiliary requests, determining that up to 10 auxiliary requests would be considered reasonable under the circumstances. This adjustment aims to streamline the proceedings and to facilitate preparations for the oral hearing.