EPO opposition vs UPC revocation
With the commencement of the Unified Patent Court (UPC), a new route for central patent revocation has become available: UPC revocation actions.
1) UPC revocation actions can be brought against Unitary Patents and European Patents that have not been opted out of the jurisdiction of the UPC.
2) In this article, we will look at the similarities and differences between European Patent Office (EPO) opposition proceedings and UPC central revocation actions. The Unified Patent Court Agreement (UPCA) names the European Patent Convention (EPC) as a principle legal text on which decisions regarding patentability will be based (A. 24(1)(c) UPCA). Therefore, revocation proceedings at the UPC will share some characterisitics with opposition proceedings at the EPO.
3) It is important to note that revocation actions can also be brought as a counterclaim to an infringement claim. Although much of this article will apply to both types of case, there are some differences between them.
Who can file?
|
EPO Opposition |
UPC Revocation |
|
Any person, meaning any natural or legal person (A.99 EPC) |
Any natural or legal person who is concerned by a patent (A.47(6) UPCA) |
|
Opposition by strawman is allowed (G3/97) |
Unclear if actions can be brought by a strawman |
Geographical Scope of Revocation
|
EPO Opposition |
UPC Revocation |
|
All EPC contracting states |
All UPC contracting states |
|
38 European states |
Presently 17 European states, but likely to expand |
|
|
Spain, Poland and Croatia are currently not signatories, and the UK has withdrawn from the UPC (it will not take part) |
Grounds for revocation
|
EPO Opposition |
UPC Revocation |
|
Lack of novelty or inventive step, or non-patentable subject matter (A. 52-57 and 100(a) EPC) |
Lack of novelty or inventive step, or non-patentable subject matter (A. 52-57 and 138(1)(a) EPC and A.65(2) UPCA) |
|
Lack of sufficient disclosure (A.83 and 100(b) EPC) |
Lack of sufficient disclosure (A.83, 138(1)(b) EPC and A.65(2) UPCA) |
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Extension of subject-matter (A.123(2)/(3) and 100(c) EPC) |
Extension of subject-matter (A.123(2)/(3) and 138(1)(c) EPC and A.65(2) UPCA) |
|
|
Lack of entitlement (A.60(1) and 138(1)(e) EPC and A.65(2) UPCA) |
|
|
National prior rights (A.54(3) and 139(2) EPC and A.65(2) UPCA) |
Amendments
|
EPO Opposition |
UPC Revocation |
|
Auxiliary requests available (Rule 80 EPC) |
Auxiliary requests available (Rule 50 UPCA) |
|
Amendments must comply with the requirements of Articles 84 and 123(2)/(3) EPC |
Amendments must comply with the requirements of Articles 84 and 123(2)/(3) EPC (Rule 50 UPCA) |
|
No limit on the number of requests |
Number of auxiliary requests must be “reasonable” (Rule 30(1)(c) UPCA) |
Expert evidence
|
EPO Opposition |
UPC Revocation |
|
Expert evidence can be used at the EPO (A. 117(1)(e) EPC) |
Expert statements and sworn affidavits can be provided (A.53(1)(e) and (h) UPCA) |
|
It is possible for an expert to be summoned to the oral hearing (R. 118 EPC), but this is unusual. |
Experts can be cross-examined (Rule 178(5) and 181 UPC ROP) |
|
In practice, expert evidence is usually provided as a written witness statement, and no cross-examination occurs |
The rules around the cross-examination of experts largely takes inspiration from the UK courts, which regularly rely on expert testimony and cross-examination. |
Timing
EPO opposition is a slightly longer process than UPC revocation. The key difference between the timings is that EPO opposition proceedings cannot begin until expiry of the opposition period, nine months from grant (A.99 EPC), whereas, a UPC revocation claim can be brought at any point in the lifetime of the patent.
Therefore, revocation action might begin before the opposition proceedings. However, the UPC can stay proceedings if a rapid decision is expected from EPO opposition proceedings (A. 33(10) UPC).
A comparison of the timeline of events:
Appeal
|
EPO Opposition |
UPC Revocation |
|
Deadline:
|
Deadline:
|
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Appeal can be based on matters of fact and law (Case Law, V.A.2.6.3 (d)) |
Appeal can be based on matters of fact and law (A.73(3) UPCA) |
|
Admittance of new facts and evidence not filed at first instance is at the discretion of the Board of Appeal (A.12(4) RPBA) |
Admittance of new facts and evidence not filed at first instance is at the discretion of the appeal judge (R. 222.2 UPCA) |
Language
|
EPO Opposition |
UPC Revocation |
|
Language of proceedings is the EPO official language in which the original application was filed or translated (A. 14(3) EPC) |
Language of proceedings is the language in which the patent is granted (A. 49(6) UPCA) |
|
During the hearing, the EPO provides simultaneous translation into any of the official EPO languages on request (Rule 4(5) EPC) |
Simultaneous translation may be organised by the court or, where the court refuses the request, by the party at their own cost (Rule 109(2) UPCA) |
|
The cost for simultaneous translation between official EPO languages is borne by the EPO (Rule 4(5) EPC) |
Where the court organises translation, the cost for translation is a cost of the proceedings to be apportioned appropriately (R. 109(5) UPCA) |
Fees
|
EPO Opposition |
UPC Revocation |
|
Fee for opposition: € 880 |
Fee for revocation: € 20,000 |
|
Fee for appeal: € 2925 |
Fee for appeal: € 20,000 |
|
Reduction of fee if:
|
Reduction of fee if:
|
Recoverable costs
In general, at the EPO each party covers their own cost of opposition proceedings, regardless of outcome.
In contrast, at the UPC, the costs of a revocation action can be recovered by the winning party. The amount of recoverable costs depends on the value of proceedings:
|
Value of the Proceeding |
Ceiling for Recoverable Costs |
|
Up to and including € 250,000 |
Up to € 38,000 |
|
Up to and including € 500,000 |
Up to € 56,000 |
|
Up to and including € 1,000,000 |
Up to € 112,000 |
|
Up to and including € 2,000,000 |
Up to € 200,000 |
|
Up to and including € 4,000,000 |
Up to € 400,000 |
|
Up to and including € 8,000,000 |
Up to € 600,000 |
|
Up to and including € 16,000,000 |
Up to € 800,000 |
|
Up to and including € 30,000,000 |
Up to € 1,200,000 |
|
Up to and including € 50,000,000 |
Up to € 1,500,000 |
|
More than € 50,000,000 |
Up to € 2,000,000 |
In most cases, the value of the proceedings will be based on an appropriate licence fee. A valuation may be based on the claimant’s loss of profits or the defendant’s profits gained, where appropriate, but this is usually too complex to be determined at the beginning of proceedings (see the Administrative Committee Guidelines for the determination of Court fees and the ceiling of recoverable costs of the successful party).
Where the parties agree on a valuation, the Court should in principle base its valuation on that estimate. However, the Court has discretion to lower the ceiling if the amount of recoverable costs would threaten the economic viability of the requesting party.
Summary: Similarities
|
EPO Opposition |
UPC Revocation |
|
Governed by the EPC |
Governed by the EPC and national law. As all UPC states are EPC states, the relevant national laws are largely harmonized to the EPC (A.24(1)(c) and (e) UPCA) |
|
Grounds for revocation are novelty, inventive step, insufficient disclosure, added subject matter and non-patentability |
Grounds for revocation include all grounds of opposition under the EPC |
|
~ 15 month process, and responses are required within two months early in proceedings |
~ 14 month process and typical response turnaround is two months |
|
Auxiliary requests available, governed by EPC |
Auxiliary requests available, governed by EPC |
|
Proceedings conclude with oral presentation of arguments based on EPC |
Proceedings conclude with oral presentation of arguments based on EPC and national law (which is largely harmonised to the EPC) |
|
Appeals available on basis of facts and law |
Appeals available on basis of facts and law |
|
Deadline for notice and grounds of appeal are two and four months from the written decision, respectively |
Deadline for notice and grounds of appeal are two and four months from the written decision, respectively |
|
Language of proceedings is the language in which the application was filed or translated (this is most often English) |
Language of proceedings is the language in which the patent was granted (this is most often English) |
Summary: differences
|
EPO Opposition |
UPC Revocation |
|
Can only be filed within 9 months of grant |
Can be filed at any point in the patent’s lifetime |
|
If successful, patent is revoked in every EPC state (38 states) |
If successful, patent is revoked in every UPC state (presently 17 states) |
|
Official fee is € 880 |
Official fee is € 20,000 |
|
Grounds do not include lack of entitlement and national prior rights |
Grounds do include entitlement and national prior rights |
Which route to choose?
Revocation actions and opposition proceedings can run simultaneously, so the good news is that you have the option to choose both routes.
EPO opposition proceedings remain the most cost effective approach to revoking a unitary patent, and have the key advantage of covering every EPC state. However, once the nine month window for opposing the patent has closed, the UPC revocation route could prove very useful and cheaper than national revocation in each UPC contracting state. In addition, the UPC route has the advantage of allowing revocation on the basis of national prior rights; therefore, for cases in which a prior national right exists, UPC revocation action could prove particularly useful.
How we can help?
E+F’s extensive knowledge and expertise of oppositions at the EPO means we are particularly well placed to assist our clients with invalidity actions at the UPC, especially in light of Art. 24(1)(c) UPCA, which identifies the EPC as one of the sources of law upon which the UPC will base its decisions.
We have carved out a niche expertise in EPO opposition and appeal work, particularly in the pharmaceutical sector.
Please do not hesitate to get in touch if we can help you in any way, at elkfife@elkfife.com.