UK: "You´re Too Slow, EPO": UK Court Steps In To Help Patentees

Opposition Proceedings at the EPO are often not concluded until six or more years after a patent has granted. Throughout this period, the patentee is at the least plagued with some uncertainty about his rights and may, particularly in continental Europe, find himself prevented from enforcing them. A UK decision, Unilin Beheer BV v Berry Floor NV, significantly improves the patentee's position. Patentees can now litigate in the UK in the certain knowledge that if the patent is held valid and infringed, a subsequent EPO decision of invalidity will not affect a UK judgment. As the UK Court of Appeal put it:

…businessmen in [the UK] know they can use the rather speedy court system [in the UK] to get a conclusion one way or the other. If the patent is revoked, the way is cleared; if it is upheld and held infringed then compensation will be payable for past acts. And an injunction will run unless [and until] there is a later revocation by the EPO. Subject to the last point, the effect of all this is that one does not have to wait to find out who has won until the slowest horse in the race gets there.

The decision is grounded in commercial sense. Unlike other European jurisdictions, the UK courts have ever been mindful of just how long EPO oppositions can last and the effect that this lack of commercial certainty has on business. Previously, this has been evidenced by the fact that the UK court will not automatically stay a UK revocation action pending the outcome of a parallel EPO opposition. What is now clear is the relationship between a UK decision and an EPO decision: The UK court wins, and it has come down firmly in favor of a successful patentee.

Now, a successful patentee in a UK action need have no concern that a later finding of invalidity in parallel opposition proceedings in the EPO will affect damages won in the UK. Whatever the EPO finds, a final decision in the UK (i.e., a decision from which there is no further right of appeal) is treated as res judicata as between the parties, and the patentee can enforce his costs award and proceed to recover damages or profits. The only effect of a later EPO finding of invalidity is that any injunction will fall away. In fast-developing markets, even this may be of limited practical effect.

The Background

Unilin is the proprietor of European patent 1 024 234, for which the UK is a designated state. The patent granted on 26 June 2002; on grant, Unilin sued Berry Floor in the UK for infringement. Berry Floor counterclaimed in the UK for revocation and started opposition proceedings in the EPO. The result: parallel revocation proceedings.

In the UK action, Unilin's patent was upheld as valid and found to be infringed by the court at first instance (2003) and the Court of Appeal (2004), with the House of Lords then refusing Berry Floor's petition for leave to appeal to it (2005). The final result in the UK: Unilin is entitled to payment of its legal costs and to an account of profits (which Unilin selected in preference to damages).

The EPO opposition started at the end of the nine-month opposition period in 2004. It is still going, and no decision has yet been made. If it is successful, the result will be that Unilin's patent will be treated as invalid ab initio—as if it had never been granted.

The Question

If the opposition is ultimately successful and Unilin's patent is revoked, does this mean that the UK decision is, effectively, null and void? Or is the UK decision res judicata as between the parties, leaving Berry Floor liable for Unilin's costs and the account of profits? Lord Justice Jacob posed the question thus:

If a patentee utterly prevails on infringement and validity and is held entitled to financial compensation in the Courts of England and Wales right up to the point where no further appeal lies, can all that be set at nought and utterly unravelled if the patent is later held invalid in the European Patent Office?

The Answer

The UK decision stands. A later EPO decision invalidating a patent will cause an injunction to fall away but will not affect a patentee's right to damages won in the earlier case.

The Reasons

The legal basis is sound. It has long been the position that a final decision on a UK national patent is treated as res judicata between the parties even if that patent is subsequently revoked in a later action. This principle has now been extended to the UK part of European patents, taking into account the EPO opposition procedure. But what shines through is the application of commercial principles to the decision and that the question to be resolved is viewed very much in its commercial as well as its legal context.

In short, the UK court has recognized that business needs to know where it stands and that a patentee should be entitled to enforce a patent on grant without the risk of it being undermined by the EPO possibly years later. If the EPO could trump the UK court, there would be greater uncertainty—a patentee would be left in limbo until the EPO made up its mind, quite possibly a number of years later. Put simply, there has been a fair fight in the UK and so the decision should be final, leaving businessmen able to get on with their businesses knowing what the position is.

The Conclusion

The UK is a speedy jurisdiction, with first instance decisions generally taking about one year and appeal even quicker. So assuming that the case does not go to the House of Lords (they very rarely do), there is likely to be a final appeal decision in less than two years. It is a quick and effective forum for a patentee to assert its rights. Now a patentee can do so knowing that if he is ultimately successful, the threat of a contrary validity finding in the EPO has been removed and he will have a judgment that can be enforced. In short, the UK court has released a patentee from the fetters of lengthy EPO opposition proceedings.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.