UPC_CoA_145/2026 – Barco v Yealink

Court
Court of Appeal
Date
Outcome
Denied
Sector
Electronics/SEP
Decision Type
PROCEDURAL

Expert Commentary

Late application to amend the patent Facts 1. Barco lodged infringement proceedings under EP 3 732 827 based on claims 1, 6, 11, 12 and 13. 2. Yealink filed a counterclaim for revocation for only the claims that were invoked. 3. Before Barco started the infringement proceedings, Yealink had already filed opposition proceedings. 4. In the opposition proceedings, Barco filed 267 auxiliary requests. 5. In its Defence to the Counterclaim for Revocation, Barco filed 5 different auxiliary requests. 6. After a negative preliminary opinion of the Opposition Division, which stated that the 267 auxiliary requests were inadmissible, Barco filed 7 further auxiliary requests in preparation of the opposition hearing. 7. These auxiliary requests were not filed in the UPC proceedings and all contained the subject matter of claims 8 and 9. 8. During the opposition hearing on 17 and 18 June 2026, one of the auxiliary requests was deemed to be novel and not insufficient or containing extension of subject matter. The discussion on inventive step was postponed by the OD until 5 November 2026. 9. On 19 June 2026, Barco filed its reply to the defence to its application to amend the claims in the revocation case and defended its original auxiliary requests it had filed in its defence in the revocation case. 10. On 20 July 2026, Yealink filed its rejoinder, discussing the original 5 auxiliary requests filed by Barco. 11. On 4 August 2026, Barco filed an application for leave to amend the patent, seeking to introduce as an auxiliary request the same auxiliary request which remained in the opposition proceedings. 12. The LD Brussels refused the request. 13. Barco appealed. The Court of Appeal 1. The Court cites the case law concerning R. 263 RoP and the conditions mentioned in R. 263 RoP. The same principles are applicable to R. 30.2 RoP. The LD has discretionary power. 2. The LD did not exceed the limits of its discretion. 3. Claims 8 and 9 are not invoked. So they survived. In fact, Barco now tries to add claim 8 and 9 to the infringement case. However, R. 30.2 RoP cannot be used for this purpose. 4. The LD was right that Barco could have invoked claims 8 and 9 much earlier. 5. The same is true for this auxiliary request. 6. Barco should have aligned its opposition with the UPC case. 7. Even assuming the OD hearing was the triggering point, why did Barco have waited seven weeks before filing its request? 8. The LD Brussels was also right to hold that allowing the request would unreasonably hinder Yealink in its defence. Comment 1. Why did Barco appeal? The outcome was a no brainer. 2. The outcome on appeal only confirms the complete lack of coordination between the patent attorneys handling the opposition and the representatives handling the UPC case. And that is not all: a. why did Barco not start litigation by invoking all relevant claims (claims 8 and 9 apparently also contain relevant subject matter to the infringement); b. why file completely different claims before the EPO and the UPC; c. why was Barco still defending the original claims on the 19 June and not (also) the remaining auxiliary request before the EPO, by filing an application under R. 30.2 RoP for that auxiliary request? On 18 June, the preliminary outcome of the opposition proceedings was known. There was a whole day left to do this! 3. The EPO proceedings keep surprising me. How can you file 267 auxiliary requests and still be allowed to file new request on the day of the hearing?

Key Holdings

  • The principles and discretionary conditions governing Rule 263 RoP are equally applicable to an application for leave to amend the patent under Rule 30.2 RoP.
  • Rule 30.2 RoP cannot be utilized to effectively introduce non-invoked claims into an infringement case at a late stage.
  • A request for leave to amend may properly be refused where the patent proprietor could have filed the auxiliary request much earlier and allowing it would unreasonably hinder the other party's defence.

Tags

  • Late application to amend the patent
  • Discretion
  • Auxiliary requests
  • Opposition proceedings

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