EPO opposition and UPC revocation proceedings

Show notes

For a deeper dive into the Unified Patent Court and the Unitary Patent, please visit our dedicated UPC website.

With the official start of next spring on the first of March 2023, the sun will rise at last over the frozen landscapes of the UPC member states. The UPC agreement itself will subsequently come into force on the first of June 2023.

With it, there will be significant changes to the way that the validity of a European patent can be challenged, which will be the topic of this podcast.

My name is Johannes Möller.

And I’m Marius Fischer. We are both patent attorneys at BARDEHLE PAGENBERG.

Marius, which options do I currently have to challenge the validity of a European patent?

At the moment there are two options: You can either file an opposition at the European patent office during a non-extendable period of nine months after grant, or you can file a national nullity complaint after expiry of that period if there are no opposition proceedings pending.

What are the main differences between opposition proceedings and national nullity proceedings?

The main differences lie in territorial scope and cost. Opposition proceedings before the EPO affect the patent in all EPC member states, whereas nullity proceedings of course only concern the respective national part of the patent. In opposition proceedings, each party generally bears its own costs. That means the opponent still has to bear their own costs even if the patent is fully revoked. Likewise, the patentee has to bear their own costs even if the patent is maintained as granted. However, the official fee is remarkably low, currently 840 euros. In contrast, in German nullity proceedings, the prevailing party has a claim for cost reimbursement against the losing party. Even the court fees ultimately have to be borne by the losing party. They are determined based on the value in dispute, and this can add up: For example, for a typical value in dispute of 1,25 million euros, the court fees amount to about 31 thousand euros.

An additional important aspect in the current system is bifurcation.

In the current system, the regional courts are competent for questions of infringement, whereas the Federal Patent Court or the EPO has exclusive competence to decide on validity. Johannes, is there still bifurcation under the UPC agreement?

That depends. Before the UPC, it is possible to file a counterclaim for revocation during infringement proceedings, which will be handled in one of three ways: The first option is that the local or regional chamber that is competent for the infringement case also rules on validity. The second option is that the local or regional chamber refers the revocation action to the central chamber. It can still decide on infringement or stay the proceedings. The third option is that the entire case is referred to the central chamber.

So at the UPC, the competent local or regional chamber decides whether or not there is bifurcation?

Exactly. And what happens if there is no infringement case but if I think that a European patent may be invalid and could potentially pose a risk to me. Can I still challenge its validity before the UPC?

Yes, it is possible to file a claim for revocation before the central chamber even if there are no infringement proceedings pending. And one thing to bear in mind here, that frequently leads to some confusion, is that this applies not only to unitary European patents issued after the start of the UPC but also to traditional European bundle patents, even those that have already been granted, so long as they have not been opted out of the competence of the UPC.

Another difference to the current system is that it is possible to file a revocation action or a counterclaim for revocation before the UPC even if the opposition period has not expired or if opposition proceedings are currently pending.

What about costs? How much does a claim or counterclaim for revocation cost and would I be entitled to cost reimbursement if I won?

The UPC charges a fixed fee of 20 thousand euros in court fees for revocation actions. This is higher than the EPO’s opposition fee but lower than the court fees of the German Federal Patent Court in most nullity cases. Plus, the prevailing party is entitled to cost reimbursement from the losing party.

Marius, what about the duration of the proceedings?

UPC revocation proceedings are intended to be completed at first instance within about one year. Thus, UPC revocation proceedings are about as fast as opposition proceedings under accelerated processing but faster than regular opposition proceedings, which can take 1,5 to 2 years, and much faster than German nullity proceedings which can take 2,5 years from the filing of the complaint until a decision is available.

Johannes maybe you can tell us about the geographic scope of decisions?

Decisions by the UPC generally apply to all UPC member states. For unitary patents, this means all members states of the UPC. For European bundle patents that have not been opted out, this means all UPC member states where the patent was validated. This means, for instance, that decisions of the UPC will never have any effect on , say, the British, Swiss, or S panish national part of a European patent.

Now, coming back to the issue of opting out a bundle patent of the competence of the UPC. What complications could occur, if I opted out an existing European patent initially, but later planned to withdraw the opt-out?

In this special case, patent holders need to bear in mind that an opt-out can only be withdrawn if no action, for example a revocation action, is pending against a national part of the European bundle patent. This way, an alleged infringer could block access to the unified patent court for a bundle patent.

Exactly. So which option is best if I want to attack a European patent: EPO opposition, UPC revocation, or national nullity complaint?

That depends. EPO opposition proceedings have the widest scope and the lowest cost risk. However, if an infringement complaint is already pending before the UPC, it might make more sense to file a counterclaim for revocation so that the same court decides on infringement and validity. This could be especially important to ensure a consistent claim construction for infringement and validity. Moreover, proceedings before the UPC may move quicker. Besides, in particularly promising cases, it can make sense to try and leverage the cost apportionment rules of the UPC to recoup at least some of the expenses. Note that, with the UPC, attempting revocation before the UPC and in parallel opposition proceedings before the EPO can be an option for important cases, or, for instance, if new and pertinent prior art has been identified, which may no longer be introduced into pending opposition proceedings due to the strict requirements of the EPC regarding late filing. Of course, national revocation actions remain the only viable option for European patents that have been opted out and for which the opposition period already lapsed.

What that means is that patent holders need to take all of this into account when deciding on or against opting out their European patents. Opting out may be meaningful for important but potentially weak patents. Possible infringers would then have to file individual national revocation actions, at least after the lapse of the opposition period. This would make a validity attack significantly more costly. Also, it might increase the likelihood that the patent survives at least in some EPC member states.

Then again, it needs to be borne in mind that, once opted out, a patent cannot be asserted centrally any longer.

Correct.

So to summarize, with the start of the UPC new ways of challenging the validity of a European patent that falls under the jurisdiction of the UPC open up. Bear in mind that this does not only apply to unitary patents but also to traditional European patents, even those that have already been granted, so long as they have not been opted out of the UPC. This leads to new strategic considerations for patent proprietors and alleged infringers alike.