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Revocation at the UPC: can UPC revocation actions be filed using a “strawman”?

Amongst other uses, the Unified Patent Court provides the opportunity to revoke a patent in any country that is a signatory to the UPC and which has not opted out.

At present, a single revocation action at the UPC could invalidate the patent in all of the 17 states that have signed and ratified the Agreement on a Unified Patent Court (UPCA).

There are a further seven states that have signed the UPCA, but that still need to ratify it.

Whilst a revocation action is expensive (the court fee is €20,000) this gives the revocation a broad geographical coverage and, unlike EPO opposition proceedings, there is no time limit in which to revoke the patent within the UPC.

One important feature of the EPO opposition procedure is that anyone can oppose a patent within nine months of the grant of the patent (other than in an abuse of process). This provides the ability for opponents to hide their true identity by using a so-called “strawman”. A strawman is a party (for example, a company) that files the opposition on behalf of the true interested party.

There are many advantages to using a “strawman” when filing an opposition or revocation action. For example, the interested party may wish to avoid alerting the patent proprietor to its interest in the patent, or it may have an amicable relationship with the patent proprietor.

Now the UPC has started, companies will want to know: can UPC revocation actions be filed using a strawman?

With no case law or practice established by the UPC, we must turn to the legislation to try to answer this question.

Article 47(6) UPCA states that “[a]ny…natural or legal person…who is concerned by a patent, may bring actions in accordance with the Rules of Procedure”. (emphasis added).

While it is not clear what constitutes “concerned by a patent”, this requirement indicates some level of interest in the patent by the party trying to revoke the patent.

It may be that the UPC interprets “concerned by” as a legal interest or standing by the person bringing the action. This would be consistent with the procedure in some UPC member states. For example, in France
a third party may commence revocation proceedings if it has a legal interest. This usually requires the third party to be a competitor to the proprietor, or to show that commercialisation or manufacturing of relevant products or services is imminent in order to bring a revocation action. However, it should be noted that the wording in the relevant section of the French Civil Procedure Rules specifically states “a legitimate interest” in the success of the action rather than a “concern” with the patent as in the UPCA, and so the intention of the legislator of the UPCA may be argued to be different.

Obviously, it is for the UPC to ultimately decide what is meant by the person being “concerned by a patent”. However, the wording of the UPCA, and the procedure before some other courts of UPC member states, suggests that there needs to be some legal interest by the party bringing a revocation action. If the court takes this view, this may prohibit a strawman bringing a revocation action on behalf of someone else before the UPC.

It is interesting to contrast this possible approach with the EPO’s opposition procedure, where it has been long established that any person (other than for an abuse of process) may start opposition proceedings. As found by the Enlarged Board of Appeal in G3/97, there is no legal interest requirement at the EPO.

This difference in approach may be explained by the remit of each tribunal. The EPO is solely interested in patent validity and actually sees the opposition procedure as a legal remedy in the public interest.

However, the UPC has a broader remit, which includes both infringement and validity, and must balance the interests of the parties to the dispute. Indeed, Rule 49(2) of the Rules of Procedure at the UPC provides a defence to revocation to include a counterclaim for infringement. Accordingly, a revocation filed by a strawman, which is unconnected to the interested party, would remove a possible defence for the patentee. This would seem inequitable in the dispute.

In short

The question of whether a strawman can bring a revocation action before the UPC on behalf of an interested party will ultimately be formed by
case law, and the interpretation of the term “concerned by” will obviously determine this.

Until it is finally settled, interested parties that require the use of a strawman for commercially important reasons should continue to use the EPO opposition procedure, rather than relying on a UPC revocation action.

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