If, after an action for infringement was brought before the central division of the UPC, the defendant files a counterclaim for revocation, both infringement and validity will be dealt with together.

If, after an infringement action was brought before a local or regional division of the UPC, the defendant files a counterclaim for revocation before the local or regional division, the panel, after closure of the written procedure and having heard the parties, may decide by way of order as follows (Article 33(3) of the UPC Agreement and Rule 37 of the UPC Rules of Procedure):

•            to proceed with both the infringement action and the counterclaim for revocation and, if not allocated already (see Rules 33 and 34 UPC Rules of Procedure), request the President of the Court of First Instance to allocate a technically qualified judge),

•            to refer the counterclaim for revocation for decision to the central division and, depending on the circumstances of the case, either suspend or proceed with the infringement action or

•            with the agreement of the parties, refer the case (infringement action and counterclaim for revocation) to the central division.

Article 33(3) of the UPC Agreement leaves it to the discretion of the local or regional division concerned to decide whether to proceed with the infringement action and the counterclaim for invalidity together or whether to refer the counterclaim for decision to the central division. In the latter case it is also left to the discretion of the division concerned whether to proceed with the infringement action or whether to stay the infringement proceedings and to wait for the counterclaim for invalidity to be decided on by the central division. All relevant circumstances of the case, including grounds of fairness to the parties, will have to be taken into account when making the decision.