Boult Wade Tennant
UPC » The UPC begins with revocation actions in the life sciences

On the 1 June 2023, the Unified Patent Court (UPC) opened its doors for business and some of the first customers were hungry for the revocation of life sciences patents. These first UPC revocation actions highlight some of the key differences between UPC revocation actions and European Patent Office (EPO) opposition proceedings.

EP3666797 (Amgen, Inc) relates to antigen binding proteins to proprotein convertase subtilisin/kexin type 9 (PCSK9). A UPC revocation action was filed against EP3666797 by Sanofi-Aventis Deutschland GmbH in the Munich Central Division with a case value of €100M.

The EPO opposition period has not yet expired for EP3666797 and, thus, it will be interesting to see whether validity is also challenged using this forum. An EPO opposition can only be filed up until 9-months from grant of a patent; however, there is no such time limit for a UPC revocation action.

EP3056563 and EP3056564 (HEALIOS K.K/RIKEN/Osaka University) relate to methods of producing retinal pigment epithelial cells. A UPC revocation action was filed against both these patents by Astellas Institute for Regenerative Medicine in the Paris Central Division with each case having a value of €500k.

EP3056563 was not opposed at the EPO and the opposition period has now expired. However, a strawman opposition has been filed against EP3056564 and proceedings are ongoing.

It is not unusual to file an EPO opposition in the name of a strawman, thus, allowing the true interested party to remain anonymous. Whether or not a strawman can validly bring a revocation action before the UPC remains to be determined by the case law.

Parallel EPO opposition and UPC revocation proceedings also raises the issue of interplay between the two. In particular, whether the UPC will stay proceedings if a decision is expected imminently from the EPO opposition proceedings.

It should be noted that a successful UPC revocation action can only revoke a Unitary Patent or the parts of a European Patent falling under the jurisdiction of the UPC, whereas an EPO opposition can lead to revocation of a patent in all validated states which may include a Unitary Patent and other national patents. Importantly, a Unitary Patent does not cover all states in the European Patent Convention (EPC). The UK, for example, is an EPC contracting state but is not covered by a Unitary Patent. Thus, revocation of the UK portion of a European patent can only be achieved through an EPO opposition (within 9-months from grant) or in national proceedings.

It is interesting to note that these first UPC revocation actions are in the life sciences. According to the latest EPO statistics (see here), the EPO opposition rate for biotechnology and pharmaceutical patents is 5.3% and 5.7% respectively with the average across all technology fields being 2.5%. It remains to be seen whether over time this early predominance of life sciences cases changes to follow EPO trends or whether the life sciences field will be particularly active at the UPC.

As European Patent Attorneys, we are able to act as representatives before the EPO and UPC and can thus offer assistance to parties in both forums.

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