In two recent cases the Paris Central Division has taken a strict approach following requests for the extension of the time period for filing a defence to revocation.

Roche Diabetes Care GmbH v Tandem Diabetes Care Inc and Tandem Diabetes Care Europe BV (ORD_9060/2024)

This case was the subject of an order issued on 20 February 2024 by the Paris Central Division. The applicant, Roche Diabetes Care GmbH, requested an extension for the time period for filing a defence to revocation in revocation proceedings brought by Tandem Diabetes Care Inc and Tandem Diabetes Care Europe BV (the respondents).

The revocation action was brought by Tandem on 30 November 2023. On 22 January 2024 Roche Diabetes Care lodged a preliminary objection requesting that the court declare it had no jurisdiction and to dismiss the action. Following this, on 15 February 2024, Roche Diabetes Care requested that the court extend the time period for filing a defence to revocation. Roche Diabetes Care argued that, since the preliminary objection would not be decided before the expiration of the deadline for filing a defence to revocation, it would be unnecessary to finalise submissions which might be unnecessary and increase costs.

In the grounds for the order the court stated that, pursuant to Rule 9 of the UPC Rules of Procedure, the court may extend the time period for filing a defence to revocation. The court pointed out that in exercising these powers it must observe the principles of proportionality, flexibility, fairness and equity. The grounds also included a reminder of the purposes for the regime of procedural deadlines at the UPC, and stated these must also be taken into account.

The purposes are:

1. “it ensures that proceedings are concluded rapidly and respectfully, where possible, of the one year period set for the infringement and revocation actions.”
2. “it safeguards the principle of fair trial by providing in advance – that is, before the beginning of proceedings – for the procedural rules which both parties have to comply with and which are regulating the proceedings itself.”
3. “it protects the principle of impartiality of the judge, which would be affected where the Court altered arbitrarily the statutory deadline in favour of one of the parties.”
4. “it assures the legal certainty that the procedural activity will be performed within a specific period of time and the parties’ trust on the relevant provisions being compulsory.”

On the other hand, the court pointed out that these statutory rules regarding deadlines should be interpreted in a flexible and equitable way in order to protect and implement the right to defence. If a party had an “objective difficulty to arrange an adequate defence within the time provided for” then an extension of the time limit may be permitted.

However, in this case the request for an extension was rejected since “there is no allegation, nor let alone evidence, of a difficulty in arranging a proper defence”. The court also stated that, as a general principle, preliminary objections should not affect time periods set out in the UPC Rules of Procedure for actions taken by parties in the written procedure. Although Rule 19(6) of the UPC Rules of Procedure allows the judge-rapporteur to make exceptions to this general principle, this decision would have to comply with the aforementioned principles of proportionality, flexibility, fairness and equity.

ITCiCo Spain SL v Bayerische Motoren Werke Aktiengesellschaft (ORD_4804/2024)

The Paris Central Division further considered what may constitute an “objective difficulty to arrange an adequate defence” in another recent case. The order for this case was issued on 09 February 2024, the applicants were ITCiCo Spain SL and the respondents were Bayerische Motoren Werke Aktiengesellschaft.

On 06 November 2023 Bayerische Motoren Werke Aktiengesellschaft brought a revocation action against the patent at issue, and on 25 January 2024 ITCiCo Spain requested that the time limit for delivery of the statement of defence be extended.

ITCiCo Spain stated that, although a copy of the revocation statement of claim was delivered to its office on a date during the last week of November 2023, the related exhibits were only accessible on 02 January 2024. ITCiCo Spain believed that letters sent by the Paris seat of the Central Division (thatenclosed the statement of claim, access code to the case management system (CMS), and request for an authorised representative) were a courtesy, and formal service would take place via the CMS once access was arranged. ITCiCo Spain explained that it faced issues when logging onto the CMS, and therefore was only able to access the case documents on 02 January 2024. Finally, ITCiCo Spain stated that it encountered a significant practical difficulty in meeting the statutory deadline since its long-standing European patent attorney had become ill in December 2023, and it had been forced to appoint an alternative representative.

In the grounds for the order the court set out the same principles discussed above. The court stated that “an impossibility or an extreme difficulty to meet the deadline which is attributable to the party requesting the extension of the deadline or its representative does not come into consideration, as it may not be deemed objective”. Regarding the annexes not enclosed with the statement of claim, the court drew ITCiCo Spain’s attention to Rule 271 of the UPC Rules of Procedure, which states that a statement of claim can be deemed as validly served, even without annexes, provided it states with certainty the subject matter and the cause of action. The court further held that the arguments, relating to not being able to access the CMS and the patent attorney being taken ill, lacked sufficient evidence. Finally, the court made it clear that submitting the request for the extension on the last day of the deadline, when the situation had apparently arisen much earlier, did not comply with the principle of fairness.

Therefore, this request for an extension of a time limit was rejected.

Takeaways

These cases are an early indication that the UPC is unlikely to grant extensions to time limits lightly, and the court will require strong evidence of an “objective difficulty to arrange an adequate defence”. This evidence is unlikely to be persuasive if difficulties arise from the party requesting the extension, and parties are advised to submit any request promptly when an issue arises.

Therefore, considering that the deadline for filing a defence to revocation is only two months, and it seems it will be difficult to request any extension of time, defendants should act swiftly once an action is brought against them. Please contact your usual D Young & Co representative for further information or assistance.

Case details at a glance

Decision level: Court of First Instance, Paris Central Division
Case number: UPC_CFI_454/2023
Judgment type: Order
Parties: Roche Diabetes Care GmbH v Tandem Diabetes Care Inc & Tandem Diabetes Care Europe BV
Type of action: Generic application
Date: 20 February 2024
Decision: dycip.com/rochediabetes-tandemdiabetes

Decision level: Court of First Instance, Paris Central Division
Case number: UPC_CFI_412/2023
Judgment type: Order
Parties: ITCiCo Spain SL v Bayerische Motoren Werke Aktiengesellschaf
Type of action: Generic application
Date: 09 February 2024
Decision: dycip.com/ITCiCo-BayerischeMotoren