26/07/2022
Once the Unitary Patent (UP) System and Unified Patent Court (UPC) come into legal effect (and even before), there will be many decisions for Proprietors of European Patents and Patent Applications to take. These include whether to file early requests for a Unitary Patent, and whether to participate in the Unitary Patent system at all or to opt out.
A further area in which the UP System and the UPC will require more decisions, but will also introduce more choice, is seeking (central) revocation of a European patent. Presently, seeking revocation of a European patent which applies for more than one country is possible only through proceedings at the EPO. Oppositions may only be brought within nine months of grant of a European patent. Otherwise, costly national revocation proceedings must be brought in each individual country, and any decision applies only for that country.
Perhaps because of the strict time limit for opposition, only about 3% of granted European patents are opposed – but in opposition proceedings, of the European patents opposed, roughly 30% are maintained as granted, 30% are revoked, and 40% are maintained in amended form, according to 2020 EPO data.
Following introduction of the UPC, central revocation actions may be initiated before the UPC for European patents which are granted as Unitary Patents. Decisions in such central revocation proceedings will apply to the UP as a whole. In addition, central revocation of European patents, whether granted before or after the UP system and UPC come into effect, may be requested before the UPC. Any decision of the UPC to revoke a non-unitary European patent will apply in all UPC participating countries, even if the European patent was granted before the UPC has come into effect – as such, you should carefully consider opting out your European patents and patent applications if you do not want them to be vulnerable to central revocation.
In contrast to oppositions, central revocation actions may be brought at any point during the lifetime of a European patent.
So which should I choose, opposition or central revocation?
The good news is that you do not have to choose– opposition proceedings and central revocation actions may be brought against the same European patent.
Nevertheless, if the opposition period of nine months from grant has not yet passed, you may ask yourself whether you should file an opposition, or a central revocation action. Each have certain advantages: oppositions before the EPO may result in revocation of the European patent which is effective in all 38 EPC member states. Oppositions are relatively cheap to initiate (official fee: €840), and there is a low risk of the Patentee successfully seeking reimbursement of legal costs.
Decisions in UPC central revocation actions, on the other hand, apply to all UPC participating countries (at present, 17), and are expected to be fast. Central revocation actions may be brought at any time, and reimbursements of legal costs for the winning party are capped, but readily available.
Ultimately, each case is different. However, rather than thinking of central revocation vs. opposition as a binary choice, they may be seen as complementary.
Although the UPC may stay proceedings if a decision in EPO opposition proceedings is expected imminently, given that UPC proceedings are expected to be fast, stays may be expected to be fairly rare. Indeed, it should be noted that in some cases, the UPC may request, of its own motion, to accelerate opposition proceedings before the EPO.
Comparison of Oppositions and UPC Central Revocation Actions
The below table may assist you in deciding whether to file an opposition, a central revocation action, or both. In the below table, we have highlighted some of the, perceived, advantages of each procedure.
| Opposition | Central revocation | |
| Forum | European Patent Office (EPO) | Unified Patent Court (UPC) |
| Entitlement to file | Any party, including strawman | Any party “who is concerned by a patent” (Art. 47(6)UPCA) – at present, it is not entirely clear if a strawman is allowable |
| Language of statement | Any one of English, French, or German | Language of patent (which is one of English, French, or German) |
| Language of Proceedings | Language of patent (but other languages may be used) | Language of patent |
| Simultaneous interpretation | From English, French, or German into any other of English, French, or German provided at EPO’s cost | Must be requested, and parties may have to cover cost |
| Official fee | Opposition fee = €840 | Revocation fee = €20,000 (partial reimbursements are available if settled or withdrawn, or if hearing with only one judge) |
| Recovery of legal fees | Usually, no recovery available | Available, minimum limit of €38,000, increases with value of proceedings |
| Time limit | Within 9 months of grant | At any time during lifetime of European patent |
| Territorial jurisdiction | All 38 EPC states | 17 UPC participating countries, may be up to 24 in future |
| Possible grounds for revocation | Added matter; Insufficiency; Lack of Novelty; Lack of Inventive Step; Lack of Industrial Application; Excluded from Patentability | Added matter; Insufficiency; Lack of Novelty; Lack of Inventive Step; Lack of Industrial Application; Excluded from Patentability; Extension of scope after grant; Lack of entitlement; National prior rights (in any UPC participating country) |
| Time to first decision | 15 months to 1st instance decision (*stated aim for “standard” cases with one opponent – can often take longer) | Less than 14 months to 1st instance decision (*stated aim for written decision – at present, it is unclear if all revocation actions will be decided within this time frame) |
| Existing case law | Wealth of case law | No existing case law |
| Merging of proceedings | Even if multiple oppositions are filed, opponents become parties to a single opposition proceedings | Although multiple actions may be heard in a joint hearing, it appears likely that separate actions, filed by different parties, will remain separate |
Summary – so what does this mean for me?
As will be clear from the above, especially from the highlighted sections, each procedure has advantages. Therefore, in some situations, especially where a dispute is very important for your business, a two-pronged attack may be advisable. There is not going to be a one size fits all approach, so please feel free to get in touch with your regular R&G attorney for specific advice.
Equally, if you are defending your patent in an opposition, you may want to consider the possible risk of a central revocation action being brought against it, either during, or after, opposition/appeal proceedings. It may be worth opting out any opposed European patent as soon as possible to reduce the risk of a central revocation action being brought against it.
As recently reported here, our European Patent Attorneys will be able to act before the UPC and we believe our experience representing clients before the EPO, in addition to supporting clients in national litigation actions, will serve us well in this new court system. Please do not hesitate to contact us with any queries you may have about the new system; whether your concern is how to opt out of the UPC or you want to learn more about revocation actions before the UPC, we are happy to help you through these once in a generation changes to the European patent landscape.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
