The patent relates to an apparatus for cold chain monitoring of perishable goods and a method for cold chain monitoring of perishable goods by way of an adaptative sensor.
Brief outline of the case
A revocation action against EP 3 414 708 has been filed at the Paris Section of the Central Division (PSCD). The action was only filed against claim 1, the apparatus claim. Method claim 18 was not challenged before the UPC.
In the course of the revocation action, the proprietor filed a series of amended claims.
The judge-rapporteur decided that the question of the admissibility of amended claims in the part where they do not relate to the claim 1, will be addressed by the panel during the course of the oral hearing.
The plaintiff in revocation requested the Court to set aside the decision taken by the judge-rapporteur and to exclude the issue of the alleged inadmissibility of the defendant’s main and AR from consideration.
The full panel decided that amendments not related to claims attacked in the revocation action are not admissible.
The plaintiff’s point of view
The plaintiff in revocation argued that the judge-rapporteur has erred in failing to exclude the issue of the admissibility of the defendant’s requests from consideration, as the facts of the matter were such that a decision could have been taken at the interim conference.
It further argued that, should the panel find that the judge-rapporteur was correct that this issue requires consideration by the full panel, the judge-rapporteur has erred in deferring consideration of this matter until the oral hearing and should instead have directed a separate hearing, pursuant to RoP 334(d) UPC, to hear the issue of the admissibility and form of the amendments separately and in advance of the oral hearing.
It requested the Court to set aside the decision taken by the judge-rapporteur and to exclude the issue of the alleged inadmissibility of the defendant’s main and AR from consideration, or, failing that, to direct a separate hearing, pursuant to RoP 334(d) UPC, to hear the issue of the admissibility of the its requests and to determine the form of the amendments separately from and in advance of the oral hearing=OP.
The panel’s decision
This panel noted that, pursuant to RoP 30 and 50 UPC, the patent proprietor may react to a claim or a counterclaim for revocation by lodging of an application to amend the patent. These provisions seem to be in line with Art 138(3) EPC.
The consistency of the RoP UPC with the principles of the EPC is made clear also by the fact that the proposed amendments have to meet the criteria set out in Ar 84 and 123 EPC with regard to, respectively, sufficient disclosure and respect of the extension of the protection of the patent as granted.
No provision contained in the RoP, the EPC or other relevant sources of law explicitly addresses the issue of amending a claim that has not been challenged; therefore, the relative assessment has to be carried out taking into account the general principles governing proceedings before the Unified Patent Court, the principles of proportionality, flexibility, fairness and equity, which guide the interpretation of the RoP, and the reported rationale of the provisions relating to the right to amend a patent.
In the framework of the UPC’s procedural provisions, the patent amendment during litigation serves as a tool that the patent proprietor may use in order to react to an invalidity challenge and, therefore, to avoid a declaration of invalidity of the patent – total or partial –, while preserving enough scope of the title to prevent infringements.
From a strictly procedural standpoint, hence, it functions as a defence for the patent proprietor to counter the invalidity claim lodged by a third party.
The nature of the right to amend the patent during litigation as a mere defence leads to the conclusion that the patent may be amended only to the extent that it is necessary to react to the invalidity challenge; this allows the proprietor to preserve patent validity through claim modifications, ultimately aiming for rejection of the invalidation claim.
It follows that the request to amend the patent may not introduce new subject matter that broadens the scope of the proceedings, as set by the invalidity claim. Therefore, applicant’s request to amend the patent with regard to claims not challenged by the revocation action shall be declared inadmissible to that extent and, consequently, the proposed amendments relating to claims other than claim 1 (the sole target of the revocation action) shall be excluded from consideration in the current proceedings.
This conclusion is supported by the fact that, in the framework of the UPC, the patent proprietor is not entitled to independently request an assessment on the validity of its patent (or on the validity of that patent), in either its granted version or in an amended form, but only to respond to an invalidity challenge by arguing for the patent’s validity, whether in an amended version or in the original one
Comments
It is first surprising to see that the PSCD refers to Art 138(3) but not to Art 138(1) which makes clear that primarily the grounds for revocation are the same as the grounds for opposition.
In conformity with RoP 30 and 50 UPC the proprietor is invited to explain why the amendments satisfy the requirements of Art 84 and 123 EPC. and why the proposed amended claims are valid and, if applicable, why they are infringed;
It is not surprising that the panel only refers to Art 123 and 84 EPC as they are mentioned in the RoP. What is however surprising is that the panel refers to sufficiency of disclosure and not to the requirements of Art 52-57.
It will be interesting to see if the CFI and later the CoA will come with a decision similar to G 3/14 on Art 84 when it comes to amendments. On the other hand, a patent cannot be maintained as granted or not if the requirements of Art 138(1,a and b) EPC are not fulfilled.
Before the CoA has decided on a similar case or after appeal against the present order, one possible conclusion is that at the UPC a kind of R 80 EPC applies, but apparently more restricted.
An amendment to the challenged patent is only possible if the amendment is in direct reply to the claims challenged according to the revocation action.
One possible escape for the proprietor could be to file a request for limitation before the EPO. Whilst at the EPO a request for limitation is inadmissible in presence of an opposition, the influence on on a limitation procedure before the EPO filed in reply to an action for revocation before the UPC is not clear at all.
It could be a way to stall the proceedings before the UPC as the valid claims would be decided by the EPO, without any examination as to N or IS. The UPC would have no choice but to accept the so limited claims.
When the PSCD notes that amending the claims allows the proprietor to preserve patent validity through claim modifications, ultimately aiming for rejection of the invalidation claim, it is clear that the UPC gives more importance to keep patents alive than revoke them. This is also to be seen in the difference in the basic fees for infringement and revocation.
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