The UCL Institute of Brand and Innovation Law chaired by Sir Robin Jacob organised a forum discussion on the topic: EPO and UPC: Friends or Foes?
The panel consisted of:
Dr Ingo Beckedorf (Chairman of Legal Board of Appeal, EPO)
Florence Butin (President of CFI of UPC)
Edward Oates (partner at Carpmaels and Ransford LLP)
Annsley Merelle Ward (partner at Wilmer Hale)
Chair: Professor Sir Robin Jacob (UCL Faculty of Laws and Director of the UCL Institute of Brand and Innovation Law)
I booked a ticket to follow the discussion on line.
I missed some parts of the discussion due to problems with the link, but can report on the bulk of it.
My recollection does not claim to be perfect and exhaustive. Other people having participated in person or online can have a different recollection/perception of the event.
It was very clear from the beginning that the chair/moderator of the panel was absolutely biased in favour of the UPC. It is clear that that Brexit and the withdrawal of the UK must have been a big disappointment for him.
Case law of the UPC vs. case law of the EPO
The chair/moderator oriented the first part of the discussion with the question which can be summarised as follows: will the EPO, more precisely its boards of appeal, follow the case law on validity of the UPC.
The chair of the legal board of appeal had an interesting reply: it depends. He added, that the role of the EPO is to grant or maintain patents the claims of which are understandable to the skilled person. It was clear from his replies that it cannot be expected that the EPO systematically follows the case law of the UPC. From the chair’s comments it was clear that he wanted to hear this. The chair of the legal board refused to give a clear cut answer to this question.
Based on his experience as national judge, he considered that in spite of a different approach at national level and at the EPO, the result could identical.
The chair of the legal board of appeal also made clear that it is of prime importance for the boards to take into account the case law of the contracting states of the EPC. This is very often the case in G decisions. In that respect, he noted that the UPC is not a contracting state of the UPC. The UPC is at best one player among many other players.
Exchange mechanisms between the UPC and the EPO have been organised. Those already exist between national courts and the EPO.
Oppositions at the EPO
Oppositions at the EPO were also discussed. The chair/moderator even repeated the comment I heard myself in one of the UPC conferences in Munich: oppositions at the EPO is like waiting for Godot.
The partner at Carpmaels and Ransford LLP was of the opinion that a drop in the number of oppositions is not to be expected. The comparison of the costs 900€ at the EPO vs. 20 000€ at the UPC spoke in favour of oppositions. For instance generic manufacturers are not displeased that oppositions at the EPO can take a few years. If they managed to kill the patent it is all the best for them.
The future of “ex-officio acceleration” of opposition proceedings, when the EPO gets knowledge that an action before a national court is ongoing will also help to accelerate matters. See the post on IPKat on the acceleration of the opposition procedure.
The chair of the boards of appeal made also clear that the EPC provides certain periods in opposition proceedings which have to be respected, e.g. an OD cannot start to work on an opposition before 9 months from grant, and there are set periods for filing an appeal or submitting the grounds of appeal. Those provisions of the EPC have to be respected.
The chair of the EPO noted that if the EPO decides the revocation of the patent, there is little to be done at the UPC. Therefore, there was consensus among the panel that contradictory decisions on the validity were to be avoided.
The UPC has to come to quick decisions but to avoid contradictory decisions
The president of the CFI was however insisting that one of the reasons for setting up of the UPC was the possibility of obtaining a quick decision at the UPC. This is for her one of the wishes of the users. Contradictory decisions on a same case should however be avoided. Commercial considerations were also important for the parties, so that quick decisions were necessary. She also showed some statistics, but it was difficult to follow her on this point. What I can say that in a big proportion of infringement actions, there a counter action for nullity.
Amendments to the patent during prosecution
At the EPO, amendments of the patent during oppositions proceedings is quite normal. This is also possible before the UPC, but, from what I understood for the president of the CFI, this possibility does not exist in France and some former national judges will have to adapt.
Stay of the procedure before the UPC in case of an opposition pending at the EPO
The question of staying the procedure before the UPC in case of a parallel opposition was also discussed. The UPC can decide to stay its procedure when a “rapid” decision at the EPO is to be expected. The discussion was then what means rapid and which type of decision should be taken into account. Only a final decision, like one of a board of appeal or the non-final decision of an OD.
The transmission broke down during this discussion and only re-started while Mr Kupecz, a UPC judge, contributed to the discussion by video. I can just say that Mr Kupecz explained how it came to a decision to stay. I will not say more on this point as it possibly would not be correct.
Some questions/comments came from the audience.
One question was about the still existing possibility to litigate in the UK. It appeared that in spite of its costs, litigation in the UK could still be a viable alternative.
One question related to the efforts of the EU commission to set a unified system for SPCs. The fear was expressed that, further than to decide on SPCs, the CJEU could also decide on patent matters. For the chair/moderator this action of the EU commission was a slap in the face of the UPC.
All in all, and in spite of the problems with the video link, it was an interesting discussion.
One can conclude that the UPC and the EPO are neither friends nor foes, but that the coexistence between the two might see ups and downs. Neither one nor the other want to be the other’s vassal.
It was difficult for the UCL not to take the Director of the UCL Institute of Brand and Innovation Law as chair/moderator. I would have greatly preferred a more neutral chair/moderator.
A pity was also that questions forwarded in advance by the audience on line were not at all taken into account.
Limitation before the EPO vs. amendment before the UPC (Question not brought forward)
A proprietor of a granted European patent, be it with uniform effect or not, can during the active life of its patent, always file a request for limitation before the EPO.
At the EPO an opposition procedure takes precedence over a limitation procedure. A proprietor confronted with a nullity action before the UPC can thus always request a limitation before the EPO.
The UPC and its Rules of procedure are silent on this point. Could this be a reason for a stay?
What if the proprietor brings before the EPO a different request for limitation than an amendment before the UPC, or that the interpretation of the amendment/limitation differs between the UPC and the EPO?
Validity of decisions of ODs of the EPO (Question partly not brought forward)
From the own statistics of the boards, it appears that nearly 60% of decisions of ODs are set aside by the boards of appeal. Could this figure have an effect on staying the procedure before the UPC?
See the comment of “observer” 25.11.2023. 11:28 PM, under