Same, Same but Different – Revocation at the EPO and UPC

The opposition procedure before the European Patent Office (EPO) has been a highly attractive forum for challenging patents since the first European patents were granted. The procedure is pretty much unrivalled across the globe in terms of bang for your buck.

The procedure is simple, streamlined and inexpensive. There are rules to follow, but they are well tested. It works. However, there are limitations - most notably a time limit of nine months after the grant date to file, but also strict rules on late filed evidence.

The Unified Patent Court (UPC) will offer opponents a second bite at the cherry, by providing another forum for central revocation (in respect of the UPC states). Further, there will be no estoppel between EPO oppositions and UPC revocation actions, so it really will be a second bite.

Revocation actions at the UPC will never replace EPO oppositions, but they will supplement them. What is more, the procedure looks familiar.

Fundamentally, EPO opposition procedure is a front-loaded written procedure, with an oral hearing at the end. The UPC will operate a similar approach – a written procedure, followed by an oral hearing. This is a typical Continental European approach to litigation.

Much like EPO oppositions, parties must set out their case in full in their Statement of Claim initiating proceedings at the UPC. This means claimants will have to anticipate facts that might be contested and provide evidence.

The deadlines for a UPC revocation action are tighter than for an EPO opposition though. The UPC requires a Statement of Defence from the patentee within two months, whereas the EPO sets a four-month deadline. This will put the patentee at more of a disadvantage at the UPC, particularly where translation into a local language is necessary.

At the UPC, the claimant may lodge a Reply to the Defence within two months and the defendant may lodge a Rejoinder to the Reply within one month, limited to the matters raised in the Reply. This contrasts with the EPO opposition procedure where, after the written procedure, the EPO opposition division will usually issue a preliminary opinion, which highlights the contested points to be the focus of the oral hearing, with a summons to the oral hearing. The parties are given a final chance to make written submissions at this point.

Before the UPC, there will also be an interim procedure between the written procedure and the oral hearing, where the judge-rapporteur will identify the facts in dispute and the main issues and set a schedule for progressing the case, including the date of the oral hearing.

In both EPO oppositions and UPC revocation actions, the oral hearing will usually be before a panel of three and will be relatively short. The UPC will usually have a daylong hearing. Although EPO oppositions can span several days, where lots of parties are involved or the issues are complex, a daylong hearing is also typical in this forum.

UPC provisions relating to the means of giving or obtaining evidence mirror the corresponding provisions for EPO proceedings (apart from the express mention of the possibility of comparative tests or experiments before the UPC, which in practice are also admitted by the EPO). Combined with the short duration of oral hearings at the UPC, this suggests that the UPC will deal with evidence in a similar way to the EPO and in depth cross examination of witnesses that is prevalent in the English courts is unlikely to be a feature of UPC oral hearings.

Each of the local and regional divisions of the UPC has included English as an allowable language of proceedings, while proceedings before the central divisions will be in the language of the patent. In practice, this will probably mean that most cases are heard in English. EPO oppositions are held in the language of the patent too, but at the EPO advocates are permitted to speak in any official language at the hearing. So at EPO hearings there is often simultaneous interpretation when the representative is not a native English speaker. Interpretation at UPC hearings will be possible, but in very limited circumstances.

There are some other notable differences too. Lodging a UPC revocation action will be significantly more expensive than lodging an EPO opposition, costing EUR 20,000 in court fees, compared to EUR 840 at the EPO.

Although EPO opposition divisions can issue costs orders to the parties, in practice parties expect to bear their own costs. The Rules of the UPC provide that a successful party is entitled to recover reasonable and proportionate costs. It is unclear at this time what level of costs will be awarded by the UPC, and how much consideration will be given to the court fees compared to legal fees.

There is also a risk of things being complicated at the UPC by a counterclaim of infringement. This in itself is different from EPO oppositions - the EPO does not consider infringement at all. But there is also the possibility of bifurcated proceedings at the UPC.

Although all revocation actions will be heard by a central division of the UPC, counterclaims of infringement can be raised at a UPC local division instead. In that case, revocation and infringement may be considered separately, unless the local division refers the counterclaim to the central division. We do not expect bifurcation to be common, but only time will tell.

Perhaps unsurprisingly, considering the legal systems governing the EPO and the UPC are both largely based on a Continental European model, and despite some significant differences, EPO opposition procedure and UPC revocation procedure look strikingly similar.

One could say “same, same but different”.

J A Kemp European patent attorneys will have full rights of audience before the UPC and we look forward to helping clients navigate and benefit from this new court, alongside EPO opposition procedure.