The validity of a European Patent can be attacked by filing an Opposition with the EPO within nine months of its date of grant, which may result in revocation or limitation of the European Patent across all EPC member states. If the deadline for filing an Opposition has expired, then revocation of a European patent must be sought at a national level in each relevant country.
Separately, the incoming Unitary Patent (UP) / Unitary Patent Court (UPC) system will allow the validity of European patents to be challenged in central revocation proceedings brought before the UPC, which may be initiated any time after grant of the patent. Central revocation will be available not only for European Patents that are granted as Unitary Patents, but also for non-unitary European Patents that are not opted out of the UPC. Revocation of Unitary Patents will not be possible at a national level.
For both Unitary Patents and non-unitary European Patents EPO Opposition will still be available within nine months of the date of grant. The EPO’s opposition procedure will remain unchanged, and decisions of the EPO’s Opposition Division will also apply to Unitary Patents. Similarly, there is no change to the EPO’s Appeal procedure and EPO Decisions of Appeal will apply to Unitary Patents as well as to non-unitary European Patents. The UPC provides a separate procedure for appealing against UPC decisions.
So what factors should be considered when deciding how to challenge the validity of a European patent? A clear advantage of the UPC central revocation is that it can be filed at any time post-grant as opposed to the relatively small nine-month window for filing an Opposition. However, the outcome of the central revocation action will apply only to all UPC countries (currently 17), which means that national revocation action may additionally be required if the patent is in force in non-UPC countries. Nevertheless, central revocation will be more cost effective than national revocation in all countries. Further advantages of UPC central revocation include that it is expected to be quicker than Opposition, can be based on grounds that are not available for Opposition (entitlement and national prior rights), and allows for a capped recovery of legal costs, which is not normally possible for Oppositions.
On the other hand, EPO Oppositions should be significantly cheaper than UPC central revocation actions, and Opposition decisions apply in all EPC member states (currently 38). Furthermore, the Opposition procedure is tried and tested, and therefore relatively predictable.
It is emphasized that, in addition to Unitary Patents, UPC central revocation can also be applied for in respect of regular, i.e. non-unitary, European patents that are not opted-out of the UPC. This means that such patents, even after the opposition period has expired, can be revoked throughout all UPC countries in a single revocation action. In contrast, after the opposition period has expired, non-unitary European patents that are opted out of the UPC can only be revoked on a national basis. Therefore, opting out of the UPC is an important consideration if it is desired to avoid central revocation.
Importantly, there is no need to choose between EPO Opposition and UPC central revocation since both may be used against the same patent. So for example a party who applies for central revocation of a patent may find it cost-effective to make a dual attack by also filing an Opposition. On the other hand, especially where costs are an issue, it may be more prudent to file an Opposition and to subsequently consider seeking central revocation only if the outcome of the Opposition is unsatisfactory. With this in mind, if an Opposition is filed against a non-unitary European patent, the patent owner may be well advised to opt out of the UPC as soon as possible to avoid subsequent UPC central revocation proceedings. Conversely, it may be prudent for the party seeking to invalidate the patent to initiate UPC central revocation at an early date to prevent the patent owner from opting out of the UPC.
The decision on whether it is better to challenge validity via Opposition, central revocation or both will vary from case to case. However, EPO Opposition is expected to remain a popular choice, not least because of its relatively low cost and its applicability across all EPC member states. In any event, owners of non-unitary European patents should give careful consideration to opting out of the UPC, while third party challengers should give early consideration to preventing them from doing so.
This article continues FRKelly's series on the upcoming Unitary Patent and Unified Patent Court. For more details, check out the following articles:
2. What is the Unified Patent Court?
3. How to Apply for a Unitary Patent
5. Register for Unitary Patent Protection
7. What Rights Are Afforded by a Unitary Patent?
8. UPC Opt-Out
9. Opposition, Appeals and Validity of Unitary Patents
10. Will the Unified Patent Court Affect SPCs?
13. Ireland and the Unified Patent Court
14. No More Fooling Around: April 1st is UPC Launch Date
15. Unified Patent Court Costs
16. Validity Actions at the UPC
17. Assignments and Licenses Under the Unitary Patent System
18. The UK and the Unified Patent Court
19. Delay to Start of UPC Sunrise Period
