The UPC operates as a further, or alternative forum, in which European patents that have not been opted out can be centrally revoked across Europe.
So, in what scenarios should businesses consider seeking revocation of competitors’ patents in the UPC?
STRATEGIC CONSIDERATIONS
- Where an opposition may have been unsuccessful on substantive or procedural grounds, or was simply not filed within the opposition window, a UPC revocation action represents a further opportunity to attack patents at any time that may be standing in the way of your commercial plans (for example, problematic patents identified in FTO exercises).
- In some cases, the ability to knock out a competitor's patent can be business-critical, and therefore the UPC offers a further avenue of attack. There are various existing revocation cases before the UPC where such a strategy has been adopted.
- Filing a further UPC action, in parallel to a pending EPO opposition, may also apply pressure on patentees, ultimately resulting in a favourable settlement.
COMPARISON BETWEEN THE TWO FORUMS
- Timings – first instance UPC decisions may be heard within a shorter time frame (12 months to trial) than typically experienced in respect of EPO oppositions (typically 18 months).
- Prospects of success - as a judge-led forum with the potential for cross-examination of expert witnesses, patents and any expert evidence that supports their validity are perhaps more likely to be heavily scrutinized in the UPC than in an EPO opposition. However, we are yet to see a full validity decision before the UPC, so only time will tell as to how judges approach validity assessments.
- Costs - whilst UPC actions may be more costly, it is conceivable that a streamlined UPC action (e.g., with limited evidence submitted), could be run at a similar overall cost to some high-stakes EPO oppositions without factoring in appeals. This should therefore be explored further with clients, rather than simply ruling out UPC revocation actions on the basis of costs. Importantly, a successful party before the UPC can expect to recover its proportionate costs. Learn more within the fees and costs section in our UPC essentials here. Click here to learn more.
- Procedure - despite some differences, many features of the EPO opposition procedure are similar to those applicable to UPC revocation actions, with facts and evidence generally being filed at the initial pleadings stage. Substantively, UPC revocation proceedings will often be closely aligned with opposition proceedings, both being governed by the European Patent Convention and covering all grounds of revocation (except that, under the UPC procedure, grounds include entitlement and national prior rights). Appeals in both forums can be based on facts and law. This should therefore provide certainty for businesses (and their inhouse lawyers) who are familiar with EPO oppositions, with there also being potential cost savings where similar arguments can be run in both forums.
Importantly, a recent UPC decision indicated that parties will not be prevented from initiating a UPC revocation claim, when EPO opposition proceedings are already on foot in relation to the same patent, in a scenario where the claimant has a legitimate interest in seeking clarity as soon as possible, and which objective may be achieved many years earlier in the UPC than before the EPO.
Please do get in touch with our experienced team of litigators and patent attorneys for advice on your revocation strategy.
