With the UPC coming into force soon, a new option to attack the validity of a bundle patent will become available: a central revocation action. This option will increase flexibility when attacking the validity of bundle patents. But guidance on when to use this option is needed. On the flipside, from a patentee’s perspective it needs to be carefully considered whether to opt-out bundle patents from the competence of the UPC which would shelter the patents from central revocation.
1. The Unified Patent Court Agreement brings new options for invalidity attacks
It is expected that the Unified Patent Court Agreement (UPCA) will enter into force soon, most likely on April 1, 2023. At the same time, also the newly created Unified Patent Court (UPC) will start operations. The UPC will then have exclusive competence with respect to questions of both the infringement and validity for Unitary Patents. It will also have competence for existing and future European bundle patents, even though during the first seven years the national courts and the UPC will have concurrent competence.
With the UPC coming into force, a new option to attack the validity of a bundle patent will become available. At present, seeking revocation of a bundle patent which revocation takes effect in more than one country is only possible through an opposition at the European Patent Office (EPO), and such opposition may only be filed within nine months after grant of the bundle patent. Otherwise, costly national revocation proceedings have to be initiated in each individual country, and any decision of a national court only applies for that country.
With the introduction of the UPC, a central revocation of bundle patents, whether granted before or after the start of the UPC, may be requested before the UPC. So, a central decision on the validity can be issued for a bundle patent, and the decision will uniformly take effect for those of the currently 17 member states in which the bundle patent has been validated. Filing a central revocation action before the UPC is possible at any time, even during the nine-month opposition period. Accordingly, within the opposition period, the validity of a bundle patent may be challenged by an opposition before the EPO and in addition or alternatively by an action for revocation before the UPC. Notably, the same options are available for a Unitary Patent.
For bundle patents, after the lapse of the opposition period, validity of each national part of the bundle patent may additionally be challenged before the relevant national courts, as national courts and the UPC will have competence over bundle patents during a transitional period of seven to 14 years. Accordingly, the bundle patent can be attacked nationally in the individual countries in which the bundle patent is validated, or centrally before the UPC.
2. Comparison of EPO Oppositions and UPC Revocation Actions
The following comparison of EPO opposition proceedings and UPC revocation actions is provided to assist in making a decision about where to attack a bundle patent and whether to opt out bundle patents from the competence of the UPC.
a) Grounds for EPO opposition/UPC revocation
The grounds of opposition are limited to lack of patentability, insufficiency of disclosure, and added subject-matter. A bundle patent may additionally be revoked before the UPC based on an extension of the scope of protection after grant, lack of entitlement, and national prior rights existing in any of the UPC member states.
b) Duration of the proceedings
Considering the duration of the proceedings, the EPO typically summons in opposition proceedings to oral proceedings after 15 months from filing the notice of opposition and gives notice of oral proceedings to be held in 6 months. Accordingly, an average first instance decision can be expected in EPO opposition proceedings in 21 months, i.e., in general in about 1.5 to 2 years from filing the notice of opposition.
In contrast, UPC proceedings are expected to be much faster. It is to be expected that oral proceedings are held after 9 months from serving the complaint, i.e., within about one year.
Considering procedural costs, EPO oppositions are relatively cheap to initiate. The official opposition fee is currently 840 euros. In addition, there is a low risk of the patentee successfully seeking reimbursement of their legal costs, as a different apportionment than that each party bears its own costs requires “reasons of equity”.
In contrast, a fixed fee of 20,000 euros is set for a revocation action before the UPC; a counterclaim for revocation incurs the same fee as the underlying infringement action, but limited to 20,000 euros. However, cost reimbursement is readily available for the successful party.
Therefore, filing with the UPC bears the drawback of higher costs but comes with the benefit of possible cost reimbursement.
d) Territorial scope
With regard to the territorial scope of the decisions, both the EPO opposition and the EPG revocation action have in common that decisions will uniformly take effect in multiple countries. A decision in opposition proceedings before the EPO may result in revocation of the bundle patent which is effective in all EPC member states (currently there are 39 member states). Decisions in UPC revocation proceedings, on the other hand, apply only to those EPC member states which participate in the UPC (at present, there are 17 such member states, excluding for example the UK).
The UPCA provides for appeal proceedings before the Court of Appeal and referrals to the Court of Justice of the European Union. An opposition filed before the EPO provides for the following remedies: Appeal proceedings before the Boards of Appeal, and referrals to the Enlarged Board of Appeal (EBoA) or petitions for review by the EBoA. Of course, if a bundle patent survives opposition proceedings, the UPC proceedings with all their remedies are still available.
3. Key conclusions for patent proprietors and potential infringers
a) What patent proprietors should consider
Against this background, the patent proprietor may consider, on the one hand, opting out important but potentially weak (in terms of validity) 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 more costly, because of the typically higher costs to initiate revocation actions in individual countries. Also, it might increase the likelihood that the patent survives at least in some EPC member states.
Then again, an opt-out from the competence of the UPC should not be considered if the patentee wants to assert the patent before the UPC. After an opt-out, the patent may generally still be opted back in. But this is not possible anymore in case national invalidation proceedings are initiated, thereby precluding the patent from being asserted before the UPC.
b) What potential infringers should consider for their defense strategy
As long as the opposition period has not lapsed, oppositions would be preferred, as EPO opposition proceedings remain the most cost-effective approach for revoking bundle patents in all EPC member states. Opposition proceedings also have the advantage that a straw man can be used if necessary (at present, it is not sufficiently clear whether this is possible under the UPCA). However, in case a quick revocation is desirable, at least in the UPC member states, a UPC revocation action may be favored over an opposition. The same may apply to cases with good chances of success which may make it likely to recover costs afforded by the cost reimbursement scheme of the UPC.
Initiating both proceedings in parallel may also be an option for important cases, or if new and pertinent prior art has been identified, which may no longer be introduced into the pending opposition proceedings due to the strict requirements of the EPC regarding late filing. It may be expected that, although the UPC may stay pending proceedings if a decision in EPO opposition proceedings is expected imminently, stays may be fairly rare, given that UPC proceedings are expected to be fast.
Compared to national revocation actions in each UPC contracting member state in which the bundle patent is validated, the UPC revocation route would provide a cheaper option with the benefit of potential significant cost reimbursement in case of winning.