Update on EPO and UPC interplay
The interplay between the European Patent Office (EPO) and the Unified Patent Court (UPC) has been of great interest to European practitioners, both from a procedural and substantive standpoint. In recent months, it has therefore been notable that the EPO Technical Boards of Appeal and Enlarged Board of Appeal have explicitly referenced decisions from the UPC and even gone as far as to explain any divergence from them.
G 1/24, for example, referenced the jurisprudence of the UPC when answering the referred questions from T 0439/22 on claim interpretation, noting that the “current case law from the UPC, as exemplified in Headnote 2 of the order of the UPC Court of Appeal of 26 February 2024 in NanoString Technologies v 10x Genomics” appeared consistent with its conclusions. In T 1535/23, the board was faced with a similar case that had already been before the UPC Court of Appeal (UPC CoA_382/2024) but ultimately came to a different conclusion on added matter.
A detailed article on this decision will follow shortly since the EPO Board of Appeal found it necessary to comment on why its decision appeared to diverge from that taken by the UPC Court of Appeal.
For now, the alignment of substantive considerations is a welcome development for parties with experience before the EPO, whilst an explanation of divergence of course helps practitioners understand nuances which arise on a case-by-case basis.
For any questions on the interplay between the EPO and the UPC, please contact your usual D Young & Co patent representative.
