IP Cases & Articles

UPC revocation v EPO opposition: differences, similarities and revocation strategies

It has now been a year since the UPC opened its doors and there have already been 185 revocation actions filed with the new court. While not on a par with the roughly 3,000 oppositions filed annually with the European Patent Office (EPO), the numbers filed at the UPC indicate it is proving popular.

In this article we explore some of the differences and similarities between the two options for central revocation, and outline some of the factors to consider when deciding on a revocation strategy.

An important note is that it is not a case of “one or the other”; it is possible to have parallel opposition and revocation proceedings before the EPO and UPC on the same patent. Indeed, there are currently ten UPC revocation actions that have pending parallel oppositions before the EPO. Some of these cases have different opposing parties before the EPO and UPC. Nevertheless, there may be some benefit to the same party filing both if, for example, new prior art or evidence of prior use has been found after the nine-month opposition period at the EPO has expired. A UPC revocation action provides an opportunity to have such prior art considered without any questions regarding its admissibility.

D Young & Co is well placed to advise on how to handle parallel proceedings as we are the representative on a number of oppositions for which there are ongoing UPC revocation actions.

Timings

Perhaps the most striking advantage of the UPC from a revocation perspective is the possibility of centrally attacking a European patent at any time after grant. There is no deadline for filing any revocation action. This contrasts with the strict deadline of nine months after grant for filing any opposition before the EPO. The UPC may therefore benefit third parties that have only become interested in a patent after the opposition period has expired as it provides a cheaper and more efficient alternative to seeking revocation actions in each separate country in which revocation is desired, which was the only option prior to the launch of the UPC. The lack of deadline for launching a UPC revocation action also gives competitors the opportunity to have a second chance to challenge if an opposition has not returned the results desired.

Territorial scope

The UPC does not have jurisdiction in all EPO member states and a successful revocation action will be effective only in UPC-contracting states. In contrast, if a patent is revoked or limited during EPO opposition proceedings the decision will be effective in all European Patent Convention (EPC) states. Therefore, if the patent is of concern in non-participating states such as the UK, an EPO opposition may be the more effective option. At the time of writing, the following countries are not within the jurisdiction of the UPC: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia (EU member states not yet ratified); Spain, Poland and Croatia (EU member states not participating); Albania, Iceland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, San Marino, Serbia, Switzerland, Turkey, and the UK (not EU member states). Romania deposited its instrument of ratification on 31 May 2024, and will become the 18th member state of the UPC on 01 September 2024.

Cost

EPO oppositions are generally much cheaper than UPC revocation actions. The official fee required by the EPO for an opposition is €880, while the UPC requires a fee of €20,000 to initiate a revocation action. However, unlike the EPO where parties bear their own costs unless in exceptional circumstances, the general rule at the UPC is that costs will be awarded to the winning party up to a reasonable limit. Therefore, despite the high official fees, a UPC revocation is an attractive option where there is a high chance of success because it may be possible to recover at least some cost.

Duration

If it is important to have the matter resolved quickly then a UPC revocation action may be the preferred route. The UPC aims to provide a decision within twelve months of the revocation action being filed. While EPO oppositions are faster than they once were, the opposition proceedings cannot begin until at least nine months has elapsed from grant, and the proceedings generally take between 18-24 months from filing the opposition. That said, EPO oppositions can be accelerated if there is a parallel UPC revocation action (even if the claimant in the revocation action is not the opponent in EPO proceedings), and conversely a UPC action may be stayed where a rapid decision is expected from EPO. However, the only two requests for a stay filed to date have been rejected on the basis that an EPO hearing taking place in just three months does not constitute a rapid decision. It therefore seems as though such stays may be rare.

Grounds

The grounds for an EPO opposition are lack of novelty and/or inventive step, insufficiency of disclosure, lack of patentable subject-matter, and added subject-matter. The UPC Agreement includes these grounds for revocation, but also includes lack of entitlement, broadening of scope post-grant, and lack of validity over a national prior right (for example, a French-only patent). National prior rights are not prior art in EPO opposition proceedings. Therefore, if there is a relevant national prior right, a UPC revocation action would provide a significant advantage of allowing revocation across all UPC states based on this document.

Substantive decisions

No final decisions have yet been issued in any revocation actions before the UPC, so there is currently some uncertainty about whether the UPC will follow EPO case law or whether we may see deviations from EPO decisions. Early indicators suggest that there may be some differences in outcomes, for example, the UPC has deviated from EPO approach with regard to claim interpretation and inventive step (see pages 08 & 10 of this newsletter). These early decisions from the UPC suggest that it may take a more holistic approach, more akin to the approach of some national courts. Additionally, there is speculation that the UPC may take a less strict approach to added subject matter than the EPO, especially if the trend of using the description to interpret the claims is continued. Therefore, our suggestion, at least at this early stage, is that an EPO opposition may be the most productive route if the strongest attack is one of added subject matter. We are of course closely monitoring the decisions that come out of the UPC and will be able to advise on strategies depending on facts of the case.

Anonymity

It is possible to file an EPO opposition anonymously by filing the name of a strawman. As yet, it is unclear to what extent this may be possible before the UPC. A UPC revocation action must be filed by a party concerned by the patent, and so it may not be possible to file it anonymously. As such, if it is important that the patent owner should not be notified of the opposing party’s interest in the patent, an EPO opposition is recommended as it allows for anonymity to be retained.

Converging approaches on procedural aspects from the EPO and UPC

As noted, it is too early to comment on whether the EPO and UPC will be similar in how they decide on substantive matters. However, we have seen early indicators that the UPC will handle some procedural aspects in a similar way to current EPO practice. For example, while there was some concern about whether it would be possible to amend one’s case in UPC proceedings (such as, to file further auxiliary requests or additional documents after the initial claim or reply), in President and Fellows of Harvard College v Nanostring Technologies Europe Limited (UPC_CFI_252/2023) the Munich central division adopted a similar approach to the EPO in allowing late-filed auxiliary requests and documents into the proceedings. Indeed, the division noted that it saw no legal basis for categorically ruling out the submission of further auxiliary requests.

Case details at a glance

Decision level: Munich central division
Case: UPC_CFI_252/2023
Order/decision: ORD_574057/2023
Parties: President and Fellows of Harvard College v Nanostring Technologies Europe Limited
Date: 30 October 2023

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