EPO Opposition or UPC Revocation or Both?

EPO Opposition and UPC Revocation – What are they?

The EPO Opposition and UPC (Unified Patent Court) Revocation procedures are both mechanisms for revocation of a European patent. Although there are many features common to both procedures, there are significant differences between them.

Scope of Opposition and UPC Revocation

The EPO Opposition procedure is available to third parties who wish to attack a granted European patent. The European patent may be a conventional European patent or a Unitary Patent. If that attack is successful, then the European patent, whether it be conventional or a Unitary Patent, is revoked for all states covered by that patent.

The UPC revocation procedure is similar, but is limited in scope to Unitary Patents and conventional European patents which have not been ‘opted-out’ of the UPC. If the revocation action is successful, then, for a Unitary Patent, it will cease to have effect at once in all of the states which are party to the unitary patent system. For a conventional European patent (which has not been ‘opted-out’), a successful revocation action before the UPC will mean that that patent ceases to have effect in all designated states to the extent that they are party to the unitary patent system. For states which are not party to the unitary patent system e.g. the UK and Spain it is anticipated, although not certain, that revocation of a conventional European patent before the UPC will have no effect.

Who Can File an EPO Opposition or a UPC Revocation action?

Any party other than the patentee may file an opposition against a European patent. The opponent may use a nom de plume, that is the opponent does not have to make themselves known. Often, oppositions are filed in the name of a ‘straw man’. An opponent does not have to have standing to file an opposition; an opposition may be filed for its own sake e.g. it is not necessary to demonstrate a business interest.

A revocation action may be brought before the UPC by ‘…any natural or legal person…who is concerned by a patent…”. The UPC regulations are not clear as to whether revocation actions may be brought by a ‘straw man’.

When Can These Actions Be Filed?

An EPO Opposition can only be filed within nine months of grant of the European patent. After that date, revocation can only be sought before the UPC (for unitary patents and conventional European patents which have not been ‘opted-out’ of the UPC) or national courts (for conventional European patents which have been ‘opted-out’).

In contrast, a revocation action before the UPC can be brought at any time during the life of the patent or even after expiry in the time limits of the Limitations period.

On What Grounds Can I File an Opposition or a UPC Revocation Action?

An EPO Opposition can only be filed on the grounds of lack of novelty, lack of inventive step, insufficiency, added subject-matter, lack of industrial applicability, and/or the subject-matter of the patent is excluded from patentability. For a revocation action before the UPC, all of these grounds are available plus lack of entitlement to the patent i.e. the patent has been granted to the wrong person; that the protection conferred by the patent has been extended after grant, and; that the existence of an earlier national patent is prejudicial to patentability.

How Much Do These Actions Cost?

The official fee for filing an EPO Opposition is 840 Euros. For a revocation action before the UPC, the official fee is 20,000 Euros. Of course, there will be attorney fees in addition.

What is the Procedure?

The procedure before the UPC will be very similar to that of an EPO Opposition with filing of the case, exchange of arguments, and an oral hearing. As the UPC will be dealing solely with patents granted by the European Patent Office, it will be guided by the European Patent Convention in the same way as the EPO. Although the UPC has not yet developed its own case law, it is to be expected that its interpretation of the law at least in the early days will be very similar to that of the EPO.

How Long Will It Be Before I have a Decision?

For both EPO Oppositions and UPC revocation actions, a decision can be expected in about 18 months. In both forums, it is possible to file an appeal.

Do I Have to Choose or Can I File an EPO Opposition and a UPC Revocation Action?

You can file an EPO Opposition or an UPC Revocation Action or both. Alternatively, you may file an EPO Opposition, wait for the outcome, and then file a UPC Revocation Action. If you file both and the UPC is of the view that the opposition proceedings are likely to be concluded in a reasonable time, then the UPC may stay their proceedings.

Next Steps

The UPC and unitary patent system, although based heavily on the existing European Patent Convention, raises a number of new options and business decisions which need careful consideration. For specific and detailed advice, please do not hesitate to contact an attorney at Avidity IP.

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