Here's a high-level reference guide to EPO opposition and UPC revocation proceedings. Separated into three sections, open up each question to learn the key features of each procedure, which gives you a side-by-side comparison of the EPO and UPC proceedings.
Bringing an action
Against which European patents can an action be brought?
EPO opposition
All European patents.
UPC revocation
European patents which have been validated as:
(i) Unitary Patents; or
(ii) Individually in UPC participating states and have not been opted-out of the UPC.
In which countries will the decision have effect?
EPO opposition
All countries for which the European patent was granted.
UPC revocation
(i) If a Unitary Patent, all countries covered by the Unitary Patent
(ii) If a European patent with national validations, those countries which are UPC participating states.
Is there a deadline for bringing an action?
EPO opposition
Yes – nine months from the date of grant, (Art. 99(1) EPC).
UPC revocation
No.
Who can bring an action?
EPO opposition
Any natural or legal person, (Art. 99(1) EPC); 'strawman' opposition is possible, (G3/97; G4/97).
UPC revocation
"Any...natural or legal person...who is concerned by a patent", (Art. 47(6) UPCA); 'strawman' action likely not possible, no determinative case law yet.
What grounds can be relied on?
EPO opposition
Excluded subject-matter; lack of novelty; lack of inventive step; lack of enablement; new matter, (Art. 100 EPC).
UPC revocation
Excluded subject-matter; lack of novelty; lack of inventive step; lack of enablement; new matter, (Art. 65(2) UPCA; Arts. 138(1), 139(2) EPC).
How much are the EPO or Court fees?
EPO opposition
€880.
UPC revocation
€20,000.
Which language(s) can be used?
EPO opposition
English, French or German, (Art. 14(1), Rule 3(1) EPC).
UPC revocation
The language in which the patent was granted (most European patents grant in English, some in German, fewer in French), (Art. 49(6) UPCA).
Who will hear the case?
EPO opposition
An Opposition Division comprising three technically qualified Examiners, who are nationals of EPC states. Rarely, if particular legal issues arise, a legally qualified Examiner may be added to the panel, (Art. 19(2) EPC).
UPC revocation
A panel of the Central Division having two legally qualified judges, who are nationals of different UPC participating states, and one technically qualified judge. The parties may agree to have the action heard by a single judge, (Art. 8(6), (7) UPCA).
EPO and Court proceedings
What are the main stages of the proceedings?
EPO opposition
Main stages usually comprise:
- Four months for the patentee to reply
- Summons to oral proceedings with a provisional opinion from the Opposition Division
- Final written submissions by the parties
- Oral hearing.
The parties can file submissions of their own volition at other times too. For example, the opponent may choose to file a response to the patentee's reply before the Summons issues, or one party may choose to reply to the other party's final written submissions.
UPC revocation
Main stages are:
- One month for a preliminary objection by the patentee (e.g. that patent is opted out)
- Two months (running concurrently with the preliminary objection period) for the patentee's defence to the revocation action and any application to amend the patent
- Two months for the claimant's reply to the patentee's defence and reply to any amendments to the patent
- One month for a rejoinder by the patentee
- Interim procedure and case management conference
- Oral hearing.
What is the form of the hearing?
EPO opposition
Usually ViCo and usually for one day.
UPC revocation
In-person and intended to be one day. ViCo allowed, but unlikely to be favoured by parties.
Where will the case be heard?
EPO opposition
In Munich, the Hague, or Berlin, but hearing is usually by ViCo.
UPC revocation
In Paris, Munich or Milan, depending on the technical field of the patent.
When can a 1st instance decision be expected?
EPO opposition
~ 18 months to 3 years from filing opposition.
UPC revocation
Court aims for a decision within 12 months of action being brought.
Can the proceedings be accelerated (or stayed)?
EPO opposition
Yes, on written reasoned request. In particular, if there are parallel infringement or revocation proceedings at the UPC or a national court.
UPC revocation
UPC aims for a decision within 12 months on all cases. The Court can stay a case if a rapid decision is expected from the EPO.
Can costs be recovered by the winning party?
EPO opposition
Default is that each party pays its own costs, (Art. 104 EPC).
UPC revocation
Successful party can recover its reasonable costs from the other party, up to a ceiling that depends on the value of the case, (Art. 69(1) UPCA).
Appeals
Can the 1st instance decision be appealed?
EPO opposition
Yes.
UPC revocation
Yes.
What is the deadline for filing an appeal?
EPO opposition
Formal notice of appeal and payment of the fee within two months of the decision; reasoned statement of grounds within four months of the decision, (Art. 108 EPC).
UPC revocation
Formal statement of appeal and fee payment within two months and reasoned statement of grounds of appeal within four months of notification of the decision, (Art. 73(1) UPCA; Rule 224 UPC RoP).
How much are the EPO or Court fees for appeal?
EPO opposition
€2,925.
UPC revocation
€20,000.
Who will hear the appeal?
EPO opposition
One legally qualified and two technically qualified members of a Board of Appeal, being nationals of EPC states; if the Opposition Division had four members, then three technically qualified and two legally qualified members of the Board of Appeal, (Art. 24(4) EPC).
UPC revocation
Three legally qualified judges and two technically qualified judges of the Court of Appeal, (Art. 9 UPCA).
Can new facts and evidence be introduced on appeal?
EPO opposition
Only exceptionally.
UPC revocation
Only exceptionally.
Can the appeal review matters of fact as well as points of law?
EPO opposition
Yes.
UPC revocation
Yes, (Art. 73(3) UPCA).
What is the form of the hearing?
EPO opposition
In-person and usually for one day (ViCo is also possible).
UPC revocation
In-person and intended to be one day. ViCo allowed but unlikely to be favoured by parties.
Where will the appeal be heard?
EPO opposition
Munich.
UPC revocation
Luxembourg.
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.