The Unified Patent Court (UPC) adopting the European Patent Office's (EPO) approach to added subject matter would be a welcome development for many intellectual property (IP) professionals, according to a recent poll we conducted.
When questioned if they would be happy for the UPC to adopt the EPO's approach to added subject matter, nearly three quarters of respondents, IP professionals from both in-house teams and attorney firms, agreed.
This was a surprising result for our team of UPC experts, who conducted the survey amongst the audience of IP professionals who joined our webinar last month. The webinar focused on the UPC and what lessons can be learned from its decisions so far, as well as pointers on preparing for a UPC litigation.
Strict approach to added subject matter strongly favoured
Commenting on the poll result, Greg Ward, partner, UK and European patent attorney, and a UPC representative, said:
"This finding was rather unexpected. The EPO's approach to added subject matter, which is often referred to as the "gold standard", is famously strict. It may therefore be expected that patentees would prefer the use of a more lenient standard in patent validity actions.
"However, with 72 per cent of respondents telling us that they favour the EPO's approach, it paints a rather different picture. It's likely that familiarity with the EPO system is a factor in this high percentage. Of course, if you were seeking to invalidate a patent, it's expected you would favour a strict approach like the one used by the EPO."
EPO's gold standard measures up
The EPO's approach to added subject matter requires that amendments to applications are within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the description, claims and drawings as originally filed.
When asked about the EPO's approach, Greg said:
"The approach is often summarised as a requirement that the skilled person must not be presented with any new technical information as the result of an amendment. The gold standard is commonly accepted as being stricter than those used in many national courts.
"By way of example, if an amendment would arguably be obvious to the skilled person but there is no unambiguous disclosure in the application, under the gold standard that amendment should not be allowed."
Added subject matter, one of the fundamentals of European patent validity, was one of the topics that our UPC experts covered during the webinar. It is often a key ground of opposition in EPO post-grant opposition proceedings.
Greg explained more about what this really means for patentees:
"When the gold standard approach to added subject matter is combined with the EPO requirement that a patent cannot be amended to extend the protection it confers post grant, the result is the Article 123(2)/(3) trap, named after the relevant articles in the European Patent Convention, which can be notoriously difficult for a caught patentee to escape.
"Similarly, added subject matter can be a crucial ground for challenging the validity of a patent in national court proceedings."
When considering equivalent proceedings at the UPC, Greg added:
"On the evidence so far, added subject matter objections seem likely to maintain a similar importance in the UPC system."
The UPC has been in operation since June 2023, and many consider the system to be a viable alternative to the use of national courts for patent litigation in Europe, particularly if there are infringements in multiple jurisdictions.
Our UPC team has first-hand experience of actions at the UPC and during our recent webinar, a panel of experts, including Greg Ward, Matthew Howell and Jamie Rowlands, talked through key insights on two of the fundamentals of European patent validity they'd gained from examining UPC decisions so far as well as their own experience of proceedings at the court. Our speakers covered the need for efficiency in the UPC, added subject matter, inventive step as well as sharing their top tips for preparing for a UPC litigation.
The webinar recording is available on request on here.
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