Defending Dependent Claims Without Amendment: The Court of Appeal on Rule 30 RoP
The Court of Appeal clarifies that defending granted dependent claims does not require a formal application to amend the patent. Proprietors must, however, explicitly substantiate which combinations they consider valid.
A patent proprietor defending dependent claims as granted against a revocation action is not required to file a formal application to amend the patent under Rule 30 RoP.
In UPC-CoA-473/2025, the Court of Appeal addressed a fundamental procedural boundary between defending a patent as granted and amending it. The dispute between Fujifilm Corporation and Kodak concerned EP 3 476 616, which protects a lithographic printing plate precursor featuring an anodized film with specific micropores. The invention aims to provide excellent image visibility and a long press life, alongside scumming resistance and deinking ability.
At first instance, the Mannheim Local Division revoked the patent in its entirety. Crucially, the Court of First Instance refused to consider Fujifilm's separate defence of the dependent claims, holding that such a defence was inadmissible because the proprietor had not filed a proper application to amend the patent. The Court of Appeal overturned this procedural finding, providing detailed guidance on how dependent claims must be asserted and challenged.
How must a proprietor defend dependent claims under Rule 29A(c) RoP?
The Court of Appeal anchored its reasoning in the principle of partial revocation under Article 65(3) UPCA. Because dependent claims add further features to an independent claim, the invalidity of the latter does not automatically invalidate the former. However, the panel clarified that the Court of First Instance is not required to investigate the validity of every dependent claim of its own motion.
Instead, the burden lies with the proprietor. Under Rule 29A(c) RoP, a proprietor requesting the rejection of a revocation action must identify in a sufficiently substantiated manner which dependent claims it considers to be valid should the independent claim be held invalid (paragraph 56). The panel noted that a proprietor can only be considered to have an interest in maintaining the patent to the extent it is defended in a sufficiently substantiated manner.
When does defending dependent claims trigger Rule 30 RoP?
The central error of the Mannheim Local Division was conflating the defence of granted claims with an amendment. The Court of Appeal held that defending the claims as granted does not require any formalities beyond the substantiation required by the Rules of Procedure (paragraph 59).
An application to amend the patent is only required if the proprietor wishes to maintain its patent with amended wording, namely deviating from the wording of the claims as granted, or if the proprietor proposes combinations of dependent claims not explicitly included therein (headnote 5). Merely defending dependent claims, including combinations already encompassed by the granted claim structure, falls outside the scope of Rule 30 RoP.
How does the Court of Appeal limit the assertion of claim combinations?
While formal amendment applications are not required for granted claims, the panel imposed strict boundaries on how combinations of dependent claims may be asserted. If a proprietor wishes to rely on a combination of dependent claims, they must clearly indicate which combinations they consider to be valid, even when those combinations directly and specifically follow from the granted claim structure.
Furthermore, the panel derived a limitation from the principles of due process. The number of such combinations that the proprietor wishes to rely on must be reasonable in number, considering the circumstances of the case (paragraph 57). This prevents a proprietor from overwhelming the proceedings with a theoretical matrix of every possible claim dependency.
What must practitioners change when defending dependent claims after this order?
Proprietors facing a counterclaim for revocation no longer need to file auxiliary requests merely to preserve their right to fall back on granted dependent claims. However, this procedural relief comes with a strict substantiation burden. Practitioners must explicitly detail in their defence which dependent claims, or specific combinations thereof, are independently valid. A generic request to maintain the patent is insufficient.
For parties seeking revocation, the order provides a tactical clarification. A party seeking revocation is required to indicate the extent to which revocation is requested under Rule 25.1(a) RoP (or Rule 44(d) RoP for a standalone action). However, the Court of Appeal noted that the party may focus its initial revocation pleading on the independent claims and the subject matter added by claims dependent thereon. The party can then provide a more detailed argumentation relating to further combinations in its subsequent reply, once the proprietor has identified exactly which combinations it intends to defend.