Comparison of opposition proceedings at the EPO and revocation actions at the UPC – advantages and disadvantages

Opposition proceedings before the European Patent Office (EPO) are an attractive forum for challenging patents; the procedure is virtually unrivalled worldwide in terms of value for money. The process is simple, streamlined and relatively inexpensive. The practice is well tested. However, there are restrictions – for example, a deadline of nine months after the grant date for submission, but also strict rules for admitting evidence submitted late.

The UPC offers a second chance by providing another forum for central revocation of a European patent throughout the territory of the UPC states. Moreover, revocation actions can be brought before the UPC at any time after grant, independently of opposition proceedings before the EPO. Therefore, it is indeed a (further) effective attack on the European patent, and even in case European opposition and appeal proceedings were already pending in parallel. In certain national legal systems like German, on the other hand, there is the restriction – besides the fact that it only acts against the German part of the European patent – that revocation proceedings are inadmissible as long as European opposition and appeal proceedings are still pending.

The opposition procedure at the EPO is essentially a written procedure with an oral hearing at the end; the oral hearing takes place before a three-member panel and may last a full day. The UPC will follow a similar approach – a written procedure followed by an oral hearing. However, there is a tight timing in the invalidity proceedings before the UPC. The UPC requires the patent owner to file a response within two months (while the EPO sets a four-month deadline); then the plaintiff may file a reply to the response within two months, and the defendant (patent owner) may file a rejoinder to the reply within one month, limited to the points raised in the reply.

The faster procedure before the UPC may allow for tactics that weren’t available before.

Each of the UPC’s local and regional chambers have provided for English as the admissible language of proceedings, while proceedings before the central chambers are conducted in the language of the patent. Oppositions at the EPO are also heard in the language of the patent, but at the EPO, attorneys are allowed to speak in any official language at the hearing. Therefore, simultaneous interpretation can be provided at EPO hearings. At UPC hearings, interpretation is possible, but only under limited circumstances.

Another difference is that filing an invalidity action at the UPC is significantly more expensive than filing an opposition at the EPO: court fees amount to 20 000 EURO, whereas at the EPO they are only 880 EURO. On the other hand, the costs of the UPC are comparable to filing a German nullity action.

Although the opposition divisions of the EPO could, in principle, order the parties to pay the costs, this very rarely happens in practice; the predominant rule is that each party bears its own costs. The UPC Rules of Procedure provide that a winning party is entitled to reimbursement of reasonable and proportionate costs. For the time being, it can be expected that decisions on the reimbursement of costs for the prevailing party will be similar to German practice.

Qualified European Patent Attorneys can represent the opponent or the patent proprietor before the EPO, while under the UPC a further legal qualification is required. If admitted before the UPC, a European Patent Attorney can solely (without the need for an attorney-at-law) handle all proceedings, be it in the revocation action and/or the infringement action.

Matters before the UPC may be become complicated if both proceedings on the validity of a European patent and on its infringement are at issue. This may occur depending on which of the two law suit types are filed at which type of court (local/regional division or central division) first. In any event, an original revocation action may be followed by a counterclaim for infringement; on the other hand, following an infringement action the defendant may challenge the validity of the patent by a counterclaim for revocation. In opposition proceedings before the EPO, only the validity itself is examined – the EPO does not consider infringement at all.

Under the UPC, there is also the possibility that proceedings are split into two – i.e. a bifurcated system practiced in Germany, where infringement and the validity are decided separately by two different courts. While all isolated revocation actions are heard by a central division of the UPC, revocation counterclaims in response to infringement may instead be brought before the then competent local division of the UPC – if the same patent and the same parties are involved, then it is even a must to go to the same local division. However, it is at the discretion of the local division to refer the revocation counterclaim to the central chamber. Practice will show which principle – the one-track or the two-track procedure – will bring overall advantages before the UPC and possibly prevail in the long run. Probably the one-track procedure will be more attractive. One of the reasons is that claim interpretation will then be uniform for both proceedings, an advantage to avoid a broad claim interpretation for the infringement part while applying a narrow interpretation when it comes to validity.

As can be seen, there are similarities but also differences between the opposition procedure before the EPO and the nullity procedure before the UPC. Probably the most significant difference in practice is the relatively strict time regime foreseen for the proceedings before the UPC. This is especially true when the infringement and revocation counterclaims run concurrently and thus require effective and expeditious action by the parties and their representatives.

The pros and cons for each system are summarized in the following Table. As may be appreciated, the disadvantage of one system may redound to the advantage of the other system, and vice versa. The decision for the one or the other system is also a question which item/issue may be strategically more important than other issues. Therefore, a certain issue such as timely initiation and speed of the procedure may prevail over a mere number of advantages and disadvantages.

Table: Summary of comparison

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