The defence – Statement of defence and Counterclaim for revocation
Following to our previous pill dedicated to the Preliminary objection (The DEFENCE: the preliminary objection), our analysis dedicated to the main means available to the defendant continues with the Statement of defence and the Counterclaim for revocation.
Statement of Defence
The Statement of Defence is the first submission on the matter filed in dispute by the defendant and presents varying deadlines:
The above indicated deadlines start from the service to the defendant of the writ starting the proceeding (i.e., respectively: the Statement of claim R. 13 RoP; the Statement for revocation – R. 44 RoP; and the statement for declaration of non infringement – R. 63 RoP)
In case there is no Statement of Defence at all, the Judge Rapporteur will directly issue decision by default for failure to reply (Rules 23 et seq. and Rules 355 et seq. RoP).
Upon the service of the Statement of Defence, it is provided that the Judge Rapporteur shall set the further schedule of the proceedings pursuant R. 28 RoP by fixing further dates, e.g., for interim conference (according to R. 101 RoP and followings, which is aimed at a better understanding of the case, for instance by allowing the better identification of the main issues and the most relevant facts in dispute, by clarifying the position of the parties and by issuing orders regarding the production off further pleadings and documents) and the date for the oral hearing.
As for the Statement of Claim, also for the Statement of Defence the RoP provides for necessary content – listed in R. 24 – and optional content.
The necessary content includes the names of the defendant and of the defendant’s representative as well as their addresses for service, the action number of the file, an indication of the facts relied on, including any challenge to the facts relied on by the claimant, the evidence relied on, where available, and an indication of any further evidence which will be offered in support, the reasons why the action shall fail, a statement whether the defendant disputes the claimant’s assessment of the value of the infringement action and the grounds for such dispute.
An optional content of the Statement of Defence could be either a Preliminary objection or a Counterclaim for revocation against the patentee according to R. 25.
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Counterclaim for revocation
If the Statement of defence includes an assertion that the patent alleged to be infringed is invalid, the defendant shall file a Counterclaim for revocation.
Counterclaim for revocation in infringement proceedings requires the pendency of the main action, even if the counterclaim is not intended to be an accessory action, thus it does not depend on the events in the main action: e.g., if the main action ends, the counterclaim shall continue.
It is always directed to the patentee, hence, in case the infringement action is filed by the licensee pursuant to Art. 47 UPCA, in filing the counterclaim the defendant shall involve the patentee who then becomes a party to the dispute (R. 25.2).
The Counterclaim for revocation shall contain inter alia: an indication of the extent to which revocation of the patent is requested; the grounds for revocation (arguments of law and facts relied on); the evidence relied on, where available, and an indication of any further evidence which will be offered in support.
The Counterclaim for revocation must be filed together with the Statement of defence. In this case, the payment of the fee for the optional counterclaim for revocation shall be made together with the Statement of defence pursuant to R. 26 and it is supposed to be checked by the Registrar. It should be borne in mind that if this payment is not done and/or remedied, the counterclaim is deemed as not filed. If the Counterclaim for revocation is not filed together with the Statement of defence, the admissibility of later filing will be subject to the decision of Court according to R. 263.2.
Counterclaim for revocation will be pending before the same Local/Regional Division of the main infringement action.
This article is by? Mattia Dalla Costa ,? Alessia Ferraro ?and Anna Iorio