Carrier v BITZER Electronics (CFI, 30 April 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 30 April 2024 (UPC_CFI_263/2023, ACT_555899/2023, App_20743/2024), the Paris Central Division (F. Thomas, P. Catallozzi, U. Keltsch), on Carrier Corporation’s application for panel review under Rule 333 RoP, partly set aside the judge-rapporteur’s order of 5 April 2024 and held inadmissible the application to amend EP 3 414 708 insofar as it concerned claims other than claim 1, the only claim attacked by BITZER Electronics A/S. The order confines amendment of the patent to the scope of the revocation action.

Question

In a revocation action limited to claim 1, may the proprietor propose amendments to claims that are not challenged?

Decision

The panel ruled without waiting for the oral hearing, since Carrier had an interest in an early decision in order to organise its defence (paragraphs 9 to 11 and 28). Amendment is a means of defence against the revocation claim and cannot go further than answering that claim requires (paragraphs 18 to 20). The proprietor cannot obtain a general ruling on validity, and the court, bound by the subject matter of the dispute, does not act of its own motion (paragraphs 21 to 23). EPO practice, that of an administrative body rather than an adversarial court, is no valid comparison (paragraph 24). The limit serves the speed sought by the UPCA, while the proprietor remains free to amend its patent before the EPO (paragraphs 25 to 27).

Key points for practice

• Practical point: in a partial revocation action, auxiliary requests must be confined to the challenged claims, amending other claims is a matter for limitation proceedings before the EPO.

Provisions applied

Agreement on a Unified Patent Court

Art. 24

Rules of Procedure

Rules 30, 50, 105.5, 333 and 334(d)

European Patent Convention

Art. 84, 123(2) and (3), 138(3)

Related decisions

• BITZER Electronics v Carrier, 5 April 2024, judge-rapporteur’s order under review.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.