Rule 75

Rule 75 – Revocation action and subsequent infringement action in a local or regional division (Article 33(5) of the Agreement)

1. Where a claimant has lodged a Statement for revocation [Rule 44] before the central division and the defendant or a licensee entitled to commence proceedings pursuant to Article 47 of the Agreement subsequently initiates an infringement action in a local or regional division against the claimant in respect of the same patent the following procedures shall apply.
2. The Registry at the local or regional division shall proceed in accordance with Rules 16 and 17. The Registry shall as soon as practicable notify the President of the Court of First Instance of the revocation action in the central division, the infringement action in the local or regional division and any Counterclaim for revocation in the infringement action. The presiding judges of the panels seized shall be informed likewise about actions in the other divisions.
3. Where a Counterclaim for revocation is brought in the infringement action and there is identity of parties as between the two actions, unless otherwise agreed by the parties, the panel appointed in the central division to hear the revocation action shall stay all further proceedings in the revocation action pending a decision of the panel hearing the action for infringement pursuant to Article 33(3) of the Agreement and Rule 37.
4. The panel hearing the action for infringement shall when exercising its discretion under Article 33(3) of the Agreement take into consideration how far the revocation action in the central division was advanced prior to the stay referred to in paragraph 3.
5. Where the panel hearing the action for infringement decides to proceed in accordance with Article 33(3)(a) of the Agreement, Rules 33 and 34 shall apply mutatis mutandis to the action for infringement.
6. Where the panel hearing the action for infringement decides to proceed in accordance with Article 33(3)(b) or (c) of the Agreement, Rules 37.4 and 39 to 41 shall apply mutatis mutandis.

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