United States: The EPC And The UPC

Article 142(1) of the European Patent Convention (EPC) states: "Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States." And thus was born the possibility of the Unitary Patent.

Not only is the Unitary Patent on the way, the Unified Patent Court (UPC) is coming. A system designed for centralized enforcement of a patent granted by the European Patent Office (EPO), the UPC will also be a forum for third parties to centrally challenge a classical European patent or Unitary Patent in a single action, which can be filed at any time during the lifetime of the patent including beyond the nine-month opposition period.

The Unitary Patent and UPC will be the biggest change to the patent system in Europe since the EPO opened for business in 1977. A closer inspection of the UPC Agreement (UPCA) and its Rules of Procedure (18th draft adopted at the UPC Prepratory Committee meeting of 19 October 2015) reveals just how entrenched the EPC will be when the Court is up and running.

Representation rights for European patent attorneys have been clarified (Article 48 UPCA and Rule 286 UPC Rules of Procedure). And for all European patent attorneys privilege will apply (Rule 287 UPC Rules of Procedure). All European patent attorneys can also fi le applications to opt out classical European patents from the UPC, as well as cancel opt outs—Rule 5(4) UPC Rules of Procedure. However, where the EPC stakes its claim most in the new system is with revocation claims.

Beginning with Article 24 UPCA, we see that the EPC is at least one of the sources of Law upon which the UPC will base its decisions:

"(a) Union law, including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/2012
(b) UPCA
(c) EPC
(d) other international agreements applicable to patents and binding on all the Contracting Member States; and
(e) national law."

With regard to validity Article 65(2) UPCA goes even further to state that decisions on validity will be exclusively based on the EPC:

"The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC."

Reminding ourselves of what appears in these sections of the EPC, Article 138(1) recites the following revocation grounds:

"Subject to Article 139, a European patent may be revoked with effect for a Contracting State only on the grounds that:

(a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
(c) the subject-matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application fi led under Article 61, beyond the content of the earlier application as fi led;
(d) the protection conferred by the European patent has been extended; or
(e) the proprietor of the European patent is not entitled under Article 60, paragraph 1."

Article 139(2) EPC states:

"A national patent application and a national patent in a Contracting State shall have with regard to a European patent designating that Contracting State the same prior right effect as if the European patent were a national patent."

Accordingly, the same law that applies for EPO oppositions will also be used for UPC revocation actions. In addition, grounds relating to lack of entitlement and national prior rights, not available in EPO oppositions, can also be employed in UPC revocation actions.

If we now turn to the UPC Rules of Procedure we see more reference and requirements relating to the EPC. For example, applications by the proprietor to amend a patent in response to a revocation claim or counterclaim must satisfy the EPC added matter and clarity requirements.

Rule 30 UPC Rules of Procedure:

"1. The Defence to the Counterclaim for revocation may include an Application by the proprietor of the patent to amend the patent which shall contain:
(b) an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid and, if applicable, why they are infringed."

Rule 50 UPC Rules of Procedure (Contents of the Defence to revocation and Counterclaim for infringement):

"2. Any Application to amend the patent shall contain the matters referred to in Rule 30.1(a), (c) and an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid. Rule 30.2 shall apply."

The UPC Rules of Procedure also confirm that auxiliary claim requests, a common feature of EPO opposition proceedings, will be admissible, Rule 30(1) stating:

"(a) the proposed amendments of the claims of the patent concerned and/or specification, including where applicable and appropriate one or more alternative sets of claims (auxiliary requests) . . .
(c) an indication whether the proposals are conditional or unconditional; the proposed amendments, if conditional, must be reasonable in number in the circumstances of the case."

The Unitary Patent is of course a patent granted by the EPO. As such, and like the classical European patent, it will be susceptible to EPO oppositions. As with parallel national court proceedings, an EPO decision can revoke a patent ab initio regardless of the outcome of parallel court proceedings. Therefore, sensibly it seems, the UPC takes this into account and provides measures for interaction with parallel EPO oppositions. This includes the possibility to request acceleration of EPO proceedings and even ruling to stay UPC proceedings.

Rule 295 UPC Rules of Procedure:

"The Court may stay proceedings:
(a) where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly."

Rule 298 UPC Rules of Procedure:

"The Court may of its own motion or at the request of a party request that opposition proceedings or limitation proceedings (including any subsequent appeal proceedings) before the European Patent Office be accelerated in accordance with the proceedings of the European Patent Office. The Court may stay its proceedings in accordance with Rule 295(a) pending the outcome of such request and any subsequent accelerated proceedings."

Like EPO oppositions, UPC revocation actions begin with a front-loaded written procedure leading to, typically, a single-day oral hearing. For revocation claims brought before the Central Division, the language of proceedings will be the language of the patent, hence English, French or German (Rule 14 UPC Rules of Procedure). The UPC timeline will, however, be much stricter, culminating in the oral hearing within 12 months of filing of the claim as opposed to just over two years which is the current EPO average. The UPC proceedings will also include an interim procedure that can comprise further pleadings, documents, directions regarding evidence such as experts, cross-examination, and experiments.

The decision will not usually be rendered on the day of the oral hearing, but instead issued in writing within six weeks. Again striking a chord with the EPO system, a Notice of Appeal can be filed within two months and the Grounds of Appeal within four months of the written decision (Rule 224 UPC Rules of Procedure).

While it is clear that validity, including admissibility of amended patent claims, is to be based on the EPC, it remains to be seen the quality of first instance UPC decisions and how they may vary across different UPC local divisions and even different central divisions. However, all divisions of the Court of First Instance will be relying on the same law and in time any concerns may be largely addressed by having a single common Court of Appeal.

There is also a question of judges and the experience of EPC law compared to national law. Just as the UPC is not bound by the EPO, neither is the EPO bound to follow the UPC's jurisprudence. However, it is unlikely that the EPO would ignore a new approach to patentability that might emerge from the UPC, particularly if that approach were to lead to the EPO granting patents that the UPC would find invalid.

Equally, would UPC decisions really stray from the vast body of EPC case law and guidance already in place? Considering the UPC provisions that take into account parallel EPO proceedings, one would still expect, or at least hope for, a more harmonious interaction concerning application of the law. Only time will tell which way the pendulum swings, if at all.

What we do know is, undeniably, the EPC is an integral part of the UPC.

Originally printed in CIPA Journal.

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.

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