The European patent litigation battleground is shifting with increasing uptake in the UPC. The possibility of simultaneously pursuing (or defending against) a UPC revocation action and an EPO opposition has emerged as an area that requires important strategic consideration. In particular, the timings, procedure and interplay of parallel EPO and UPC proceedings can be utilised to maximise the chance of success.
EPO opposition vs UPC revocation – why opt for both?
An EPO opposition remains a valuable and cost-effective route to centrally revoke or limit a European (EP) patent across all EPC states. An opposition must be filed within 9 months of grant, and it usually takes around 18-24 months from expiry of the opposition period to obtain a decision.
A UPC revocation action can also, or alternatively, be filed against EP patents that have not been opted out of the UPC’s jurisdiction. A revocation action can be brought at the UPC any time from grant, including after the 9-month opposition period. If successful, the EP patent is only revoked in the UPC-contracting states (so far, 18 of the 39 EPC states). However, if the proprietor is domiciled in the EU, the court may also decide on the validity in non-UPC states (such as the UK and Switzerland) in a manner that is binding on the parties involved in the action, as we reported here. A key advantage over EPO oppositions is the speed – UPC decisions are typically issued within 14 months of initiation of the revocation action. However, UPC litigation is significantly more expensive and resource intensive. Nonetheless, successful parties can generally recover a considerable proportion of their costs.
Filing both an EPO opposition and a UPC revocation action provides two opportunities to obtain an invalidity decision. Competitors who are keen to clear the way may initiate both UPC and EPO proceedings within the 9-month opposition period with the hope to obtain fast revocation before the UPC in the UPC-contracting states and eventual full revocation at the EPO. If the UPC decides to maintain the patent, the EPO is not bound by the UPC’s decision and there is a second chance for revocation.
Alternatively, patent challengers could wait until after the 9-month opposition window to file the UPC revocation action to allow more time to strengthen their case, for example by searching for further prior art, waiting for the proprietor’s reply to an EPO opposition or indeed waiting for the EPO’s decision. Again, if the EPO decides to maintain the patent (e.g. in amended form), the UPC is not bound by the EPO’s reasoning and may still find the patent invalid.There are several tactical advantages to parallel proceedings. The dual track applies maximal pressure on the proprietor to quickly defend the patent. Defendants are subject to particularly tight deadlines in UPC revocation proceedings. In addition, the dual track creates uncertainty for the proprietor which can potentially hinder the threat of infringement actions or shift leverage in settlement and licence negotiations.
When will the UPC stay proceedings?
Proprietors may desire a stay of UPC proceedings to slow the revocation action and make litigation more manageable. Under Article 33(10) UPCA and Rule 295 RoP, the UPC has discretion to stay proceedings pending the outcome of a parallel EPO opposition when a “rapid” decision is expected. The decision from the EPO does not need to be final (i.e. an appeal decision). However, case law indicates that there is a high threshold for what constitutes a “rapid” decision, in particular:
Even if the EPO’s decision is expected to be given rapidly, the UPC will weigh up the interests of the parties and the relevant circumstances of the case in exercising its discretion. Relevant circumstances may include:
There is general hesitancy to stay UPC proceedings in view of the court’s commitment to conduct an oral hearing within 1 year from the statement of claim. The Court of Appeal has acknowledged the risk of conflicting UPC and EPO decisions but notes that the latter deciding body can take into account the earlier decision (Carrier v Bitzer Electronics), for example the UPC may request parties to inform the court of a verbal decision at the end of EPO oral proceedings (Edwards v Meril).
Nonetheless, patent challengers keen to avoid a stay of proceedings may tactically file a UPC revocation action soon after grant such that the UPC proceedings are already at a late stage upon expiry of the opposition period (at which point an EPO opposition is accelerated), leading to the requirements of a stay not being met.
Further strategic considerations
Patent challengers should consider whether to file similar evidence and arguments in both an EPO opposition and a UPC revocation action. This is cost-effective and most likely to lead to a consistent outcome, but it may be a relevant factor in the UPC deciding to stay proceedings pending the outcome of the EPO opposition. It is also important to note that the UPC will take into account earlier national prior rights (i.e. national patent applications in an EPC state that were filed before, but published after, the priority date of the EP patent), which are not prior art in EPO oppositions.
Proprietors should consider utilising EPO proceedings to proactively amend and strengthen the EP patent against UPC revocation actions. Early case law indicates that the UPC may be amenable to proprietors submitting claim amendments that have been maintained in an EPO opposition, even if late filed, to avoid a different claim scope in UPC countries vs non-UPC countries which could limit enforcement until a final decision at the EPO Boards of Appeal is issued.
The dual track means that European patents will be tested as never before. With significant experience in EPO opposition and involvement in recent UPC actions, Boult are well equipped to assist in co-ordinated and strategic parallel proceedings.
