CASELAW-UPC – reviews of UPC decisions

UPC – PI not granted for lack of infringement

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EP 3 398 487 was not opposed.

Brief outline of the case

The owner of EP 3 3 398 487a PI against an alleging infringing product.

In decision UPC_CFI_182/2023, the request for a PI was rejected.

After having filed an action before the Vienna local section of the UPC, the proprietor filed a request for opt-out.

The Vienna local section of the UPC also held that an application for interim measures renders an “opt-out” according to R 5 PRUPC ineffective. The corresponding blocking mechanism means that the jurisdiction of the UPC can no longer be withdrawn.

The alleged infringement

The object of the patent was to provide a method and a device for the production of milk foam with adjustable temperature, whereby the consistency and quality of the milk foam is improved compared to the known methods and devices.

In the proceedings before the UPC the length of a line section downstream of a throttle device by which foamed milk was generated was at stake. The function of the line section downstream of the throttle is to act as a calming line section so as to better homogenise the milk foam. This allows to produce an improved milk foam compared to the known methods and devices

Interpreting the claim under Art 69(1) and its Protocol, the local Vienna section of the UPC decided that there was no infringement for the following reason:

In the alleging infringing device the length of the line section provided downstream of the throttle device is around 10 cm.

In claim 2, allegedly infringed, there is no length mentioned, just that the diameter is different upstream and downstream the throttle is different. However in dependent claim 8, a line section with length of 0.5 to 2 m to the outlet is provided downstream of the throttle device, the length being preferably 1,5 m.

According to the description § [0032] the diameter of the line section downstream the throttle device is PREFERABLY different from the inside diameter upstream of the throttle device.

According to the description § [0032], the length of the line section downstream of the throttle IS in the range of 0.5 to 2 m, preferably approx. 1.5 m.

The independent claim comprises an element which is only deemed optional (preferably) in the description, and only dependent claim 8 mentions a feature which is not preferable, but according to the description mandatory. In order to obtain a better milk foam the length of the line section downstream of the throttle should be in the range of 0.5 to 2 m. The only possible conclusion is that the length of the downstream section should, according to the description, be at least 0,5 m.

A length of 0,1 m in the allegedly infringing device is much shorter as the minimum length of 0,5 m according to the patent. Hence there could not be any infringement.


Opt-out following an action before the UPC

It is plainly manifest that opting out a patent after having started an action before the UPC is useless. That the Registrar has not yet decided on the withdrawal of the opt-out is thus irrelevant.

Interpretation of the claim under Art 69 – Diverging case law between UPC and BA

In order to decide whether to grant a PI, the local section of the UPC interpreted the claims in the light of the description according to Art 69 and its Protocol.

When applying Art 69, the Vienna local Section read into the claim limitations which were not present in the independent claim on which the alleged infringement was based.

This is in clear contradiction with a long line of case law of the boards according to which it is not allowed to read into the claims a limitation only present in description.

We have thus here a clear divergence of case law between the UPC and the boards of appeal of the EPO.#

I doubt it will remain to this difference.

On the procedure

Independently of the application of Art 69 and its protocol, one wonders how such a patent could at all have been granted.

What is optional in the description is in the independent claim and what is mandatory,  is only subject of a dependent claim.

The adaptation of the description to the claims did manifestly not take place, and the requirements of Art 84, support, have not been respected. The preferable character of the different diameters should have been deleted at grant as it ended up in the independent claim.  

In order to obtain a homogenous milk foam, the minimum length of line section downstream the throttle should have been 0,5 m.

This feature should have been taken up in the independent claim. It is thus also possible to consider that the patent contains an unallowable intermediate generalisation.

When looking at the survival rate of patents after opposition and appeal before the EPO (20%), patent owners would be well inspired to somhow ascertain the validity of the patents they want to use in infringement proceedings before the UPC.

In case of a parallel opposition of the EPO, this check will be finalised with the decision of a board. It might take time, but then the situation is clear. What was an alleged infringement might end up in a revocation or nullity.

Even in case of alleged infringement, a guarantee for the excution of a PI and/or a decision on infringement should be required from patent owners in case the patent is later revoked or severely limited.

Readers are left to decide about the quality of patents granted by the EPO, cf. IPQC.


15 replies on “UPC – PI not granted for lack of infringement”

francis hagelsays:

Dear Mr Thomas,

I disagree with your conclusion that there is a « clear divergence of case law between the UPC and the boards of appeal of the EPO ». In my view, it ignores the clear difference of context between the UPC handling a request for PI and the EPO boards of appeal dealing with the assessment of validity of a patent or application.

When the UPC deals with a request for PI, the dominant issue is the likelihood of infringement of the patent-in-suit and the UPC applies article 69 EPC for the determination of the extent of protection. The logic and need for consistency implies that if as usual the defendant files a counter-request for revocation, the UPC will also apply article 69 for assessing the likely validity of the patent.

In contrast, the EPO only needs to apply article 69 strictly speaking to assess compliance with article 123(3) of claim amendments during opposition. Beyond this narrow area, if the case law of the EPO is to become that Article 69 should be used for claim interpretation in the assessment of validity, this implies a substantially different context, in which the rule should be consistent with the rule of claim interpretation applied during the examination of applications.

The difference between these contexts is such that the « description » referred to in article 69 is not the same depending on the context. When applied to assess the extent of protection in infringement proceedings, the relevant date is the date of the infringement allegation (the date of introduction of the request before the court), since the knowledge of the alleged infringement is required. The « description » in this case can only be the description of the granted patent, possibly including post-grant amendments.

In contrast, if article 69 is to apply to validity assessment, the relevant date has to be the filing or priority date, for consistency with the validity conditions which all rely on this date. This implies that the « description » of article 69 has to be in this context the description of the original application. This is visible when the UPC makes use of the original application in their interpretation of the claims. This has been called « prosecution history » by some coleagues and has raised eyebrows, but this may have to be distinguished from the usual meaning of the prosecution history.

A major element in the context of validity assessment before the EPO is that the claims must be given their broadest sensible interpretation and the red line is that no unclaimed feature can be read into the claims. If the applicant or patent owner wishes to rely on an unclaimed feature to show novelty or inventive step, they must amend the claims to include this feature.

This rule has no reason to apply strictly to a court such as the UPC in the context of infringement assessment. A court must not be bound by such a rule because it may have to consider a broader spectrum of issues which may be relevant to its decision. It may agree that the extent of protection encompasses equivalents but also decide that, even though this seems infrequent, it must be narrower than the scope defined by the wording of the claims (if e.g. this is argued by the patent owner to avoid novelty or inventive step challenges). A significant element in this context is the claim interpretation submitted by the patent owner in support of the infringement allegation before the UPC and other statements which may create a prosecution estoppel.

A fair comparison of the UPC case law with the EPO case law will require that the context are similar. This will take place in standalone requests for revocation, in which no assessment of infringement is needed.

I notice in any event that the intertwining of UPC and EPO proceedings has already sizable effects on the practice of the parties esp. the emphasis on claim interpretation as an initial section of opposition notices and the reliance on the patent owner’s statements before the UPC by the opponent before the EPO.


It has always been my practice, as opponent, to set out a claim interpretation at the beginning of any notice of opposition. How can compliance with any of arts 54, 56, 83 and 123 be ascertained before it has been decided what the claims mean. It is always amusing to see how the proprietors change their interpretation when they discuss different objections. Of course many opponents fail to apply consistently any coherent interpretation when attacking a patent.

Avatar photoDaniel X. Thomassays:

@ Opponent

It is certainly not wrong to set out a claim interpretation at the beginning of any notice of opposition.

There is however a big proviso: your interpretation has to be accepted by the proprietor, but more importantly by the OD, or later, the board. The nicest interpretation is of no use, if it is not taken over by the deciding body.

Fluctuating interpretations of claim features by the opponent or the proprietor are rarely helping their respective cause. That in such circumstances, a unified interpretation of claim features by the deciding body might be a useful exercise. In doing so, all parties are on a par.

It is common practice in Germany, see the decisions of the German Federal Court (BGH) to start first with an interpretation of the claim at stake (the famous “Auslegung”) before deciding either on infringement or on validity.

When it comes to infringement of the German part of a granted European Patent, this is understandable in view of Art 69 and its Protocol on Interpretation.

A series of boards of appeal of the EPO appear to have adopted the famous “Auslegung”, whereas more boards are restrictive on the application of Art 69 and its Protocol. They reserve it when assessing ambiguous claims or the requirements of Art 123(3).

In view of the upcoming referral on the application of Art 69 and its Protocol, it is to be hoped that the situation will be clarified, at least before the EPO.

When it comes to validity/nullity of the claims at stake, a prior interpretation of claim features does thus not appear absolutely necessary in all circumstances in view of the primacy of claims in European practice.

However, every national court or the UPC can decide how it sees fit when applying the EPC on the national part of a European patent or a patent with unitary effect or not opted-out.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

When I wrote the present blog, I took bets that you would react. I was not disappointed.

I am rather disappointed to see that you claim that I “ignore[s] the clear difference of context between the UPC handling a request for PI and the EPO boards of appeal dealing with the assessment of validity of a patent or application”.

I am too long in the IP business (50+ years) not to known what is happening during and after prosecution. For historical reasons, I explained in another blog, why the EPO is only dealing with granting patents and oppositions. Oppositions can be equated to nullity or decisions on the validity of a patent. Art 138 provides that, mainly, the grounds for revocation of a European patent at national level are the same as grounds for opposition.

I can agree with you when that “when the UPC deals with a request for PI, the dominant issue is the likelihood of infringement of the patent-in-suit and the UPC applies article 69 EPC for the determination of the extent of protection”. I can also agree that, in principle the EPO should apply Art 69 when it comes to assess Art 123(3). Some boards have gone further and would like to see it more liberally applied. The upcoming referral on the application of Art 69 in procedures before the EPO will, hopefully, clarify the situation.

My disagreement starts when you claim that when assessing the validity “the UPC makes use of the original application in their interpretation of the claims”. This was done by the Munich local section, and I am not sure that prosecution history is the right way to interpret the claims. I do not think that the CoA of the UPC will appreciate this move. Prosecution history has never be a way to assess claims at the EPO, and to my knowledge this notion is only used in The Netherlands.

When it comes to assessing Art 123(2) what matters is the what is disclosed directly and unambiguously in the original application. I would not call this applying file history. File-wrapper estoppel in the US style is applying file prosecution history.

What is important is not just Art 69, but its Protocol on Interpretation.
Art 1 of the Protocol states the following:
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims.
Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated.
On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

Art 1 of the Protocol tries to find a balance between, on the one hand, the old UK approach, strictly looking at the wording of the claims. Just look at the “Epilady-Improver” case. In the famous “Pemetrexed” decision, the UKSC made use of Art 2 of the Protocol and introduced equivalents in the scope of protection. Alas, the Protocol does not define what is to be understood as an equivalent. The blame by the UKSC to the examiner when it raised an objection under Art 123(2) for a general claim on pemetrexed, was clearly unjustified.

Art 1 of the Protocol tries to find a balance between, on the other hand, with the more lenient old German approach, considering the claims as a mere guidance and looking at the “general idea” behind the claims.

Art 1 and 2 of the Protocol allow a certain extension of the scope of protection going beyond the strict content of the claims. Art 69 and its Protocol allow to incorporate in the claims some features which were not in the claims, but still covered by them.

Coming back to our topic, and carefully reading my contribution in the case at hand, you will see that the UPC did not try to read into the independent claim at stake some broader features on the basis of the description, did not extent the scope of protection of the claim, but radically amended and consequently limited its content. It read into the claim restrictions only found in the description, and even purposedly ignored the content of independent claim on the basis of the description.

I am not sure that this way of looking at Art 69 and its protocol corresponds to the spirit and scope of this legal rules. There is a long line line of case law of the boards of appeal of the EPO according to which Art 69 cannot allow to read in the claims restrictions onl found in the description. This is the reason why I considered the present decision of the UPC diverging from the case law of the boards.

In view of the situation created by granting a patent which description was not adapted to the claims, the local Vienna section did the best it could do. It would indeed have been unfair to grant a PI to block sales of device which was clearly not infringing, when one compares the length of the line downstream of the throttle, 10 cm in the alleged infringing product vs. at lest 50 cm, preferably 1,5m in the patented product.

Just before grant, § [0032] should have been amended and the optional character of the difference in diameter should not have been left as optional in the description, and in view of the effect to be achieved, the minimum length of the section downwards the throttle, 50 cm, should have been added into the claim.

This example shows why it is so important to adapt the description to the claims before grant and contradicts clearly your position and that of all those pleading for not adapting the description to the claims.

It avoids a court acting post grant to make moves which correspond neither to the scope nor the spirit of Art 69 and its Protocol to come to a fair result for the parties.

Even though I have not spent more than a few minutes reading this item, two thoughts occur to me, on which I should like to read more from Messrs Thomas and Hagel.

First thought is the importance of the maxim “Be careful what you ask for”. Before you take up the court’s time, before you try to intimidate your competitor by demanding interlocutory injunctive relief, you should carefully consider the consequences. As Daniel Thomas notes, the court should require the patent owner to post a bond, large enough to compensate the accused infringer and the court) if the patent turns out to be invalid or not infringed. If that happens, the bond is forfeit. Who disageees with that.

Second, I doubt whether strict conformity between description and claims in the 71(3) Druckexemplar will make any significant difference to the complexity of post-grant full-blown infringement-validity litigation between two determinedly adverse parties. But that’s just me. Others with a different 50 years of experience have other opinions. Let the debate continue.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

I cannot but agree with you that any attempt by a patent owner to claim infringement with a shoddy patent is doomed to fail. In view of what is happening at the EPO, this might occur more than from time to time. This is especially the case when the patent is in parallel opposed before the EPO, as only 20% of opposed patents survive an opposition after appeal.

The UPC is geared to decide quickly, but in case of a parallel opposition, the last word lies with a board of appeal of the EPO. Infringement might then simply disappear either due to revocation (50%) or to limitation (30%). Hence the need for a deposit at the UPC..

I understand your point of view about R 71(3) and post-grant full-blown infringement-validity litigation between two determinedly adverse parties. Based on our respective experiences we have diverging points of view in matters of adaptation of the description.But that’s life.

It remains that, if the ED had actually fully read the description, the claims would have looked quite differently. The ED is to be criticised for not having done what it was meant to do. It is however not completely to blame as the production pressure is steadily increasing.

It is easy to say afterwards that the proprietor should not have started requesting a PI before the UPC with such a patent, but this is a matter of fact. The representative might have felt successful when he got a patent for his client, but it was a Pyrrhus’ victory, as the patent it got was indeed rather shoddy. Opting out after starting an action before the UPC was also not very clever. Which representative can suggest such a move?

The UPC is an illusion for SMEs. The UPC is for the benefit of big industry and even more for big Anlo-Saxon litigation firms acting worldwide

If an SME is successful at the UPC, it might pay, but in the contrary it will be rather expensive. In the other case where the PI was refused by the Munich LS, I would never have started a PI or infringement proceedings on the basis of the patent at stake.

In the present case and in the other one above, one can suspect big litigation firms having suggested an attack.

francis hagelsays:

Dear Mr Thomas,

Your response ignores my remark that it is not justified to refer to a divergence between the UPC and the EPO case law regarding claim interpretation and the application of Article 69 to validity assessment.
Your emphasis on such a divergence is surprising, since you have repeatedly claimed yourself on this blog and others that there is a clear divergence within the BOAs as to the application of Article 69 to validity assessment. In other words, there is no settled case law on this issue at the EPO. But all of a sudden, tada ! as magicians say, you conjure up a case law of the EPO regarding the application of Article 69 to validity assessment (without defining it though).

As to the UPC, it is premature to talk about a « case law », there is only one decision of the Appeal Court I am aware of regarding claim interpretation, and this was a request for PI, not a revocation action, so that validity was assessed only in terms of likelihood. At this point, it is prudent in my view not to jump to conclusions.

I note an interesting coincidence between on the one hand the emergence of the UPC and on the other hand the push by some BOAs towards the application of Article 69 to validity assessment. Until recently, this was not an issue, the settled case law was that Article 69 was to be applied by the EPO only to assess compliance of post-grant claim amendments with Article 123(3). It is not entirely surprising that some BOAs are eager to expand their remit beyond that stated by Article 69, even if this implies some distortion (or let’s say « creative interpretation ») of Article 69. But there is a possible link with the UPC. There may be the objective for these BOAs to define a case law in the area of claim interpretation for validity assessment just to position the EPO vis-à-vis the UPC as a body having a doctrine on this issue. The referral in T 439/22 points in this direction.

You make no secret of your loyalty to the EPO and the BOAs, which is your absolute right. I also note that you frequently voice critical comments on the entire UPC project, which is also your absolute right, as it is my right to disagree. Whether there may be some sort of competition for leadership and prestige between the EPO and the UPC is probably inevitable, as a fact of life. But it must not be overemphasised.

Overfocus on this aspect carries the risk of an utter disregard for the considerable benefits the UP system and the UPC provide to the EPO and to the users, including the key role of the EPO in the management of unitary patents, and the close cooperation between the EPO and the UPC esp. in the handling of parallel EPO and UPC proceedings and the acceleration (or stay) of opposition proceedings at the EPO in such context.

Such intense cooperation is highlighted in the presentation delivered by Carl Josefsson, President of the BOAs, at the Fordham Conference of April 2024 « UPC and Boards of Appeal : two courts, one shared responsibility » ( This is indeed interesting read. I note that « mutual consideration » and « persuasiveness » are the key words in Mr Josefsson’s conclusion as to harmonisation of case law between EPO and UPC. In this respect, it is appreciated that Mr Grabinski, President of the UPC Appeal Court, has been an external member of the EBA.

One of the key objectives of the UPC regarding the case law it has started to build is to take the best of the case laws of the national courts, and the EPO case law is to be considered as well. This obviousley implies for the UPC the freedom to build a case law which may depart from the existing case laws. I recently read some comments from German colleagues who raised eyebrows when a decision of the UPC Munich LD did not comply with the German case law. They will have to understand and be prepared.

As to SMEs, it is to be noted that their rate of UP registrations, 36%, is far above expectations, according to a recent presentation by Mr Campinos. They reap great, immediate benefits from the simplification and cost reduction resulting from UP registration, compared with national validation procedures. This must not be overlooked by exclusively focusing on litigation before the UPC. After all, litigation will only relate to a minuscule fraction of unitary patents.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

My reply to you will be two-fold. One part will deal with the history of the EPO and its relation with the UPC, and the second part with the UPC as institution.

Here is the first part.

It is your good right to consider that it is not justified to refer to a divergence between the UPC and the EPO case law regarding claim interpretation and the application of Article 69 to validity assessment. I beg to disagree as the UPC and the EPO have different tasks.

I can agree that there happens to be a coincidence between on the one hand the emergence of the UPC and on the other hand the push by some BOAs towards the application of Article 69 to validity assessment. This is in my opinion due to a large number of German legal members at the boards. That they are, in view of their legal education, inclined to follow the case law of the BGH is thus quasi normal. This does however not mean that this point of view should be applied.

It reminds me, that during my initial training in Munich, one of the trainers, a German former member of the Fedreal Patent Court, designated chairman of the boards, which at the time did not exist, was always referring to case law. One of the trainees, a Dutchman, asked which case law was meant. The reply from the future chairman was crystal clear: the case law of the German Federal Court (BGH). The majority of those present, denied the role of the BGH as provider of case law. It is remarkable that the boards of appeal did such a good job and created a unified system of case law without being hampered by national traditions.

There is however one fundamental aspect, linked to the emergence of the EPC in the early seventies, which is ignored when now Art 69 should be used when assessing validity.

The EPC is for a large part derived from the original four drafts aimed at establishing a patent under the umbrella of the EEC, now the EU. This was the aim of the then called Community, later European Patent. It was a complete package associating grant and post-grant procedures. The “travaux préparatoires” are full of references to those four drafts.

One should not forget that, in view of the upcoming of the PCT, and hence the need not to be swamped by unexamined patents, members states of the EEC/EU decided to restart negotiations and open the convention to non-EEC/EU states.

In order to arrive at an agreement between a large number of countries, the only viable way, as far as I know, proposed by Mr Haertel, head of the German delegation, was to separate granting and post-granting procedures, and. to open the package previously limited to CEE/EU member states to other Euopean countries. Post-grant procedures were initialy subject-matter of the Luxembourg Conference of 1975. It was still born for reasons known to all, and has now resuscitated under the avatar of the UPCA and the “Unitary Patent”.

That granting cannot be completely distinguished from post-grant use is not at stake, but the historical split between grant and post-grant procedures, is the reason for Art 69 and its Protocol on interpretation. The only, albeit indirect, reference to the scope of protection, is to be found in Art 123(3) in case of an opposition.

It was and still is an acquired fact that Art 69 and its protocol were for the exclusive use of national courts dealing with post grant procedures. It worked fine as it is. It is difficult to see why the difference is between the EPO and national courts in post-grant procedures, should not remain the same between the UPC and the EPO.

Bringing in Art 69 in procedures before the EPO implies a great danger. The whole case law of the EBA has been based on a strict interpretation of the legal requirements of N, added-matter and identity of invention.

Bringing in various interpretations under Art 69 and its protocol, not to say dynamic ones, would jeopardise this carefully established case law. Bringing Art 69 and its protocol when it comes to define what was directly and unambiguously disclosed would means allowing equivalents to be added to the original disclosure. That the EPO’s stance on added matter is a problem for some applicants is a fact. But what is gained on N is lost on added matter. N and added matter are the two sides of the same coin. Furthermore, features might remain new as they are different, but they would most probably become not inventive when equivalents can be added.

I doubt very much that there should be some sort of competition for leadership and prestige between the EPO and the UPC. Such a competition is vain, but when I hear Sir Robin Jacob wanting the chair of the legal board of appeal say that the EPO will follow the case law of the UPC, it is clear where, for some people, the leadership should lie.

The UPC has the same role as national courts vis-à-vis the EPO, no more, but no less. Like national courts, the UPC deals with post-grant procedures and the EPO has to bring to grant a patent which can then be handled adequately in post-grant procedures in a large number of member states and not only those of the UPC. This should not be forgotten by giving the UPC an importance it does not have and should never gain.

If we would have had from the beginning, a European patent system in which grant and post grant procedures had been combined, the situation would have been quite different. Wanting now to carry out what was missed 50 years ago does not seem the right way to do. The big problem is that with the present situation the CJEU has barely a say when it comes to patents and their validiy.

In the present case, the UPC, when dealing with infringement, read into the claim features which were not present. It actually ignored what was in the claim. In view of the claim supremacy at the EPO, this is unthinkable at the EPO. Case law is very clear: the description cannot be used to bring in the claim limitations which are not present in it, when reading the claim with a mind willing to understand.

A certain degree of cooperation exists between national courts and the EPO. Some even claim to follow the case law of the EPO, but actually do the opposite. It is thus normal that a certain of degree of cooperation will be established between the UPC and the EPO. Claiming the contrry would not be tenable politically. Like national courts keep their independence vis-à-vis the EPO and vice-versa, the same should happen between the UPC and the EPO.

That for political reasons it has to be emphasised that “mutual consideration” and “persuasiveness” are key elements, does not change the situation. This also applies for the relations between national courts and the EPO. Not only Mr Grabinski is an external member of the EBA, some national judges sitting on UPC panels are also external members of the EBA. It’s not enough to make a big deal of it, and it comes down to clinging to very superficial aspects.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

Here is the second part of my reply.

I have practiced European integration all along my professional career, and wanting to come to a common understanding on what should happen post-grant is not something I am against.

That it would be nice to have a common regulation on what happens post-grant, is one fact, but the necessity of the UPC does not impose itself. I have never heard that patents posed a real problem within the EU. The notion, created by the CJEU, of exhaustion of rights to the patent lead to the fact that patents could not be used as an obstacle to the free movement of goods and services within the EEC/EU. Industries having sufficiently deep pockets could easily act for infringement in front of different courts. SMEs are for a big part only interested in their domestic market.

For more than 40 years there was no need for a unified post-grant system I have heard a lot of rhetoric about the need for and the benefits of the UPC, but I’ve never seen a reliable economic study on the subject.

That the EU at large and the Commission could not accept a supra-national litigation system, the EPLA, centred on the EPO, ended with the famous opinion C 1/09.

The impact study on SMEs made at the moment of EPLA has never been redone for the UPC. Why not? The ceilings on imputable costs are by no means a guarantee of survival for SMEs. At a moment it was even envisaged to have a litigation insurance for SMEs!

When one realises that, according to official statistics of the EPO, barely a third of the patents are granted to proprietors having their seat in an UPCA contracting state, and more than half of those are granted to non-European patent holders, the economic necessity of the UPC may be reasonably questioned. It should also not be forgotten that the UPC has actually opened a single door for litigation for non-European patent holders. It remains to be seen if this is really to the benefit of European industry in generl and European SMEs in particular.

Why do you think that countries like Poland and the Czech Republic do not want to join the UPC system. Slovenia and Portugal participate as they have been promised an arbitration centre.

My strong reservations against the UPC comes from the way it has been created and pushed through with a total disdain of the rule of law, especially following Brexit.

As far as what happened after Brexit, I refer for a large part to my post of 22.01.2023, “Is, after Brexit, the UPC Agreement compatible with EU law?”. You will see that the withdrawal of the UK from the UPCA, which does not contain any exit clause, by a mere “Note Verbale”, is highly questionable.

The situation has worsened in the meantime as the presidium of the UPC has decided before even the opening of the UPC, that the tasks originally devolved to London will be provisionally allocated to the Paris and Munich sections of the central division. I could not find in the whole UPCA any legal basis for this decision.

Where has it be seen that court is free, not just to interpret, but to take a decision which is in clear contradiction with its founding legal framework? Can you imagine a court in any EPC contracting state deciding to deeply amend the legislation which is at its origin?

The same goes for the decision under Art 87(2) UPCA of the Administrative Committee of the UPCA creating a Milan section of the central division. There has never been question in the UPCA of another place than London, Paris and Munich for sections of the central division. Art 87(2) UPCA was merely designed to adapt in a convenient way the UPC once all its contracting states have adopted Union law, e.g. an EU SPC or an EU Frand legislation, or an international legislation on patents.

Both those changes have been made to the UPCA without any reference to the VCLT! One wonders why? One could conclude that the UPC, at least its central division, now and in the future, is not a court according to Art 6(1) ECHR.

The same goes on when the Court of Appeal decides in a composition of three LQJ, whereas Art 9(1) UPCA requires a panel of thee LQJ and two LQJ. Efficiency should come after the rule of law!

After Brexit, the only correct way to amend the UPCA would have been to renegotiate Art 7(2) and Annex II of the UPCA. This was not to the liking of the proponents of the UPC as they would risk the whole project never to materialise.

The whole setting up of the UPC has been characterised by the necessity to create as quickly as possible a fait accompli. The idle time caused by the reversal of the ratification by Germany could have been used to adapt to the consequences of Brexit on a sound legal basis. When one reads the Explanatory Note given the German MPs before the second ratification vote, it is easy to realise who held the pen auf the civil servants in the German Ministry of Justice. In that explanatory note, Art 31 VCLT was mentioned. It has never reappeared since!

However, the more time passed, the more it became clear that the UPC would cause more problems than it would solve. Opening eyes on the drawbacks of the UPC was not wanted by its proponents.

One has to realise that the UPC is the result of intense lobbying of certain circles which wanted an opportunity to get even more out of the patent system. Big industry has used SMEs as a fig leaf to hide its interest. The big lawyer firms engaged in international litigation have a direct interest in the creation of the UPC.

The difference between the basic fee for infringement and the basic fee for nullity is a scandal on its own. The UPC has not been made for SMEs as they do not have the financial means to sustain an attack from the side of the big industry. In view of the high costs they may have to foot, they will rather accept a licence, even if there is no good reason for it.

According to Art 41(2, 1st §) UPCA, the RoP should be the result of broad consultations with stakeholders. In reality the whole RoP have been concocted by a self-coopted group of people, lawyers stemming mainly for big Anglo-Saxon lawyer firms, and judges. The RoP are clearly inspired by British lawyers.

At least when the EPC was ratified, the Implementing Regulations to the EPC were known. This was not the case for the RoP of the UPC. Lots of legal rules have been packed in the RoP which are in the EPC itself. The reason for this is clear: according to Art 41(2, 2d §) UPCA, they can be amended by the Administrative Committee and do not need a Diplomatic Conference.

In those RoP, a mere look at the language regulations, RoP 14+RoP 321-324, shows how a complicated system has been created. All the UPC’s apologists have always claimed that the UPC would solve any language problems. The contrary is true, as a panel can even use the official language of the country in which it sits.

This is why we have had decisions in German on patents granted in English by local panels of the UPC. Simultaneous interpretation is possible before the UPC, but the corresponding costs will have to be borne by the loosing party, within applicable ceilings in case of a SME. Another reason for SMEs to avoid any litigation with big industry. It will be interesting to see representatives requesting simultaneous interpretation at the EPO, but not doing the same at the UPC.

The RoP which have been concocted in the way described above contain a number of further surprises. Only re-establishment is foreseen in the UPCA, RoP 320 but there is no appeal possible, cf. RoP 320.7.

A new notion has also been introduced in the RoP: intervention and even forced intervention, cf. RoP 313-317. According to RoP 313.1, any person establishing a legal interest in the result of an action submitted to the Court can apply to intervene. This is somehow comparable with an intervention in opposition.

According to RoP 316.1, the judge-rapporteur or the presiding judge may, of his own motion after hearing the parties, or on a reasoned request from a party, invite any person concerned by the outcome of the dispute to inform the Court, within a period to be specified, whether he wishes to intervene in the proceedings.

Such an invitation to intervene can be declined, but then forced intervention, cf. RoP 316A.,1, can be decided against the person declining the invention to intervene. If the person invited to intervene does not defend itself against the invitation to intervene, it will not be allowed to argue against the decision taken by the court, cf. RoP 316A.2.

The forced intervention, simply means that a third party may be bound by a decision of the UPC without having participated in the court proceedings. Some doubts about the constitutionality of this measure are permitted.

There ae plenty of other aspects of the UPCA which can be cautioned, but for the time being, I will stop here.

My critical comments on the UPC project are not the result of any speculative considerations, but of an in-depth examination of all the ins and outs behind this project.

francis hagelsays:

Dear Mr Thomas,

I was not surprised by your catalogues of UPC-bashing mantras, that you have publicised many times on IP blogs, only slightly surprised that you have chosen to send them to me. I could even feel honored that you seem to expect me to answer. But now that the UP system and the UPC are up and running, I find it pointless arguments over whether the UPC should have ever existed and to rewrite history.

What strikes me though in your messages is that you seem to take the whole UPC issue so personally. It really looks like the UPC is literally driving you mad. Why are you reacting so angrily ?

In any event, some items of your catalogue would need updating. Dubbing the SMEs a figleaf ignores the simple fact that the UP system which is the basis of the whole project, and in which the EPO is the key player, already provides considerable benefits to the SMEs, as clear from the sizable uptake of the UP registration by SMEs. Also, I smile at your tirades about « big pocket » and non-EU corporations, knowing that the biggest EPO applicants by far (EPO 2023 Patent Index) are a Chinese company (Huawei), two Korean companies (Samsung and LG) and a US company (Qualcomm), which in so doing, masssively contribute to the funding of the EPO. Non-EU applicants account for ca. 57% of 2023 filings.

An interesting feature of the UPC is to recruit judges from national courts on a part-time basis. For example, Ms Mélanie Bessaud, a judge at the French court de cassation, works part-time for the UPC Paris division (JUVE Patent 10 May). This bodes very well for the harmonisation of case law within European courts. Ms Nathalie Sabotier, recently appointed to the cour de cassation and the former, highly-respected President of the IP-specialised chamber of the Paris tribunal judiciaire, explained that national courts could benefit from hiring technical judges – taking inspiration from both the EPO and the UPC.

I hope you will join me in wishing the best for the future of the UPC and the EPO and their fruitful cooperation.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

You did not understand or wanted to understand what I have patiently tried to explain. It is your problem, not mine, and I will leave it at this. But it gives a lot to think about your state of mind.

I have nothing personal against the UPC, my life does not depend on its success or failure. What I however consider important is the respect of the rule of law. Without any respect for the rule of law, we end up in the jungle. And I do not wish this to happen.

To me the UPC is the contrary to the triumph of the rule of law and this is not a pleasant thought. I am not the only one having queried the conformity of the UPC with Art 6(1) ECHR. Just look at IPKat of Kluwer Patent Blog. But what cannot be true will not be seen by those who wish to be blind.

I have personally be at numerous conferences about the UPC and SMEs. The message I heard from SMES was unmistakably clear: we are frighten of it as we do not have the financial means for arguing against big industry. You did not say anything about the reasons why Poland and the Czech Republic did not want to ratify the UPC. The answer is simple: it would be detrimental to the respective domestic industry.

If a SME attacks another SME at the UPC, the arms might be about equal, and that explains that for some SMEs the attractivity of the system. Once some will see their hopes shattered by decisions taken by the UPC and the costs it entails, there might be a change of attitude. When you further see the rate at which European patents are revoked or maintained in amended form after appeal in opposition, the wake up might be hard.

A lot has been left in the dark about the UPC and all what it entails. especially the costs incurred. The setting up of the RoP by a self co-opted group of people is a prime example of not wanting to put everything in broad light.

For a start, parliaments have not been properly informed about all the ins and outs of the UPC. Everything was honky dory and the seventh marvel of the world was being created.

Looking at the UPC, and a lots of articles about it, a conclusion imposes itself: it is the result of intense lobbying from groups of the kind of Business Europe and alike, and especially of internationally active law firms. Whether you like it or not, SMEs were a fig leaf for the big industry. Some proponents of the UPC even admitted it. The way the RoP have been devised is a scandal on its own.

Your comment about filings from non-European applicants illustrates wonderfully what I said. The beneficiaries of the UPC are primarily non-European patent holders, just because of their sheer number, A single door to attack European industry and SMEs has been opened to non-European patent holders.

When you know that, in spite of Brexit, US industry wanted the UK to say in the UPC system, it speaks for itself. There will not be any British judges sitting at the UPC, and applicants will not have the possibility to use UK lawyers, but UK representatives qualified in litigation. Just have a look at all the articles wanting to keep the UK in the UPC in spite of the Brexit: the same lobbying law firms were at work.

That national judges are acting part-time at the UPC is a necessity. How could it work without the participation of those judges? There’s really nothing to get worked up about. What is however interesting, is to note that in the PPI, the earnings from UPC judges, and of the Registrar, will not be taken into account in the total taxable income in their countries of tax residence. This benefit is not open to all other staff of the UPC. Again this says a lot!

Technical judges are certainly a positive aspect in the UPC. Besides in the central division, they are however not automatically called on a panel. Talking about technical judges, when looking at their code of conduct, the conclusion is clear: they are not really welcome, but have to be tolerated as they are mentioned in the UPCA. The rest is hot air. Their code of conduct has been drafted under the direction of one of the staunchest supporters of the UPC, who never disguised its profound aversion towards technical judges. I heard it myself. The code of conduct has also been published after they had been appointed, which lead some of them to give up their appointment.

In spite of the code of conduct, conflicts of interests or queries about their true independence are pre-programed. Most of the technical judges are at the same time patent attorneys in active practice, and this alone represents a problem as they are to be employed in their area of competence. At least in the Netherlands, technical judges cannot be in active service, they have to be retired.

Harmonisation of case law on infringement might well be achieved in UPC contracting states, but for all the other EPC contracting states, it will simply add a further layer of case law. And this at a non-negligible cost!

Your are hoping in vain, as I will do anything but join you in “wishing the best for the future of the UPC and the EPO and their fruitful cooperation”. As I explained, but you did not seem to understand or want to understand, their tasks are quite different. Mutual respect and consideration, yes, but this is not the cooperation as you envisage it. The UPC cannot have a different status vis-à-vis the EPO than national courts. This could be different it was a truly European court like the CJEU, or a truly multinational court like the Benelux court. .

I would certainly have wholeheartedly wished every success to a truly European court, encompassing all EU contracting states, but not to the present court being the result of intense lobbyism and which actually shows regularly its disdain to the rule of law. Just look at the decisions of the CoA taken with only three LQJ in clear contradiction with Art 9(1) UPCA.

I am actually surprised that learned legal people, and especially judges, can be willing to participate to such a farce. Any second year law student would be aware of the problems. Whatever you might say or think, the UPC is by no means a court according to Art 6(1) ECHR. It starts with the central division and in view of the exit of the UK from a treaty without an exit clause, this question is even broader.

You came, as usual, with a lot of considerations, all besides the point, but you never tackled the crucial points, especially the disdain for the rule of law at the UPC. I am not surprised. It was to be expected.

I do invite you to indicate clearly and unambiguously what is the legal basis for all what is happening at the UPC, especially without even a single reference to the VCLT. It looks conspicuous that in no decision about the UPCA and in no decisions of the UPC itself, the VCLT has ever been mentioned when it comes to interpret the UPCA. This is another proof of the disdain for the rule of law of all the proponents and now actors of the UPC. Efficiency is not above the rule of law! Lobbyism and private interests might think they are about the rule of law, but they are not.

The UPC is blatantly ignoring the VCLT, this again says a lot and certainly not in its favour. Besides in its “dynamic” interpretations, even the EBA regularly refers to the VCLT when it comes to correctly interpreting the EPC, and especially to its Art 31/32.

As for the topic on the adaptation of the description, the topic UPC/EPO is exhausted and I do not wish to answer any further comment of yours, unless I am forced to do so.

francis hagelsays:

Dear Mr Thomas,

All UPC legally qualified judges are well versed in EU constitutional law. For a case in point, see the UPC order issued yesterday by the Paris Central division Tandem Diabetes vs Roche Diabetes. The Presiding judge and judge-rapporteur for this order is Mr Paolo Catalozzi, also a judge at the Italian Supreme Court.

Can you seriously believe that the UPC judges would have accepted an appointment at the UPC had they thought that the UPC violates the rule of law ?

The UPCA was reviewed by the CJEU for compliance with EU law and amended pursuant to its requirements.

That being said, I agree that there is no need for further comments.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

By making untrue allegations, you force me to reply.

I never challenged as such the legal knowledge of LQJ sitting on panels of the UPC. With due respect to the LQJ sitting on the UPC, I have to observe that constitutional law is a very specific field. It is therefore allowed to reasonably doubt whether LQJ of the UPC are well versed in constitutional law. They are certainly versed in civil law and litigation, but I doubt that constitutional law is their every day bread and butter. Where do you take this allegation from?

As far as the constitutionality of the UPC is concerned, I would like to draw you attention to RoP 316A. A third party might be invited to intervene in an action before the UPC, but if a party refuses to do so, it will nevertheless be bound by the decision in the action. I doubt that is constitutional in any member state of the EU, that by refusing to being dragged into an action before the UPC, a party will nevertheless be bound by the decision of the UPC. That’s going a stretch too far.

When seeing decisions, like those of the CoA with 3 LQJ and of the presidium allocating duties to the Paris and Munich section of the central division, in flagrant contradiction with the letter of the UPC as ratified by the parliaments, as well as blatantly ignoring the VCLT, one is legitimately allowed to wonder how it can be arrived at such decisions by legally qualified persons and in full respect of the rule of law.

Your comment is a only based on suppositions not backed by any legal reasoning and misses the point. This appears to be a constant in your comments. You never reply to the questions raised, just answer anything and quote decisions which have nothing to do with the price of bread. It just looks nice and sounds well. This is not serious.

Another of your favourites is to wrongly quote decisions. In a comment you posted on 19.04.24 in an IPKat blog on the upcoming referral about the application of Art 69 at the EPO, you wilfully misquoted T 447/22 and T 1628/21. Contrary to what you alleged, T 447/22 is silent about “unclaimed” examples, and T 1628/21 does by no means say that only “unclaimed” examples cannot be relied upon by the patent owner to read limitations into the claim. Either you quote correctly or you refrain from doing so.

Contrary to what you allege, the UPCA was NEVER “reviewed by the CJEU for compliance with EU law and amended pursuant to its requirements”. If this would have been the case, you should be in a position to give the reference of a corresponding decision or opinion of the CJEU. I challenge you to find any such decision or opinion.

What was actually reviewed by the CJEU was the defunct EPLA. In the famous opinion C 1/09, the CJEU held that the EPLA was not conform tp EU law. The CJEU has never taken position on the conformity of the UPCA with EU law. Eminent legal scholars have even disputed that the UPCA was actually conform to EU law. .

The proponents of the UPC carefully avoided any reference to the CJEU. It has never been inquired from the CJEU whether the UPCA was in conformity EU law.

The proponents of the UPC merely postulated that the UPC and the UPCA were in accordance with EU law by virtue of Art 20 UPCA (Supremacy of EU law) and Art 21 UPCA (Requests for preliminary rulings). The CJEU was also never even asked whether it was prepared to accept requests for preliminary rulings from the UPC.

There would have been ample time after Brexit and the postponement of the German ratification to have the UPCA vetted by the CJEU. Why was this not done? For fear that the UPCA could be considered not conform to EU law. It was important to create a fait accompli in the hope that later the CJEU would not dare say anything against the UPC. Better, the proponents of the UPC came up with a tautology: the UPC is conform to EU law as it is so because we say so.

I invite you firmly to be more careful with your allegations and not to come up with blatant untruths or with answers that miss the point.

This should be the last comment from my side, unless you continue as you presently do.

francis hagelsays:

Dear Mr Thomas,

What is ironical is that your accusations (that I use blatant untruths and ignore your arguments) perfectly match what you have done yourself. First, you have made up a divergence between the EPO and the UPC, and second, you have ignored my comment that there is no settled case law on the application of Article 69 to validity assessment.

As to the objective, I see it as an attempt to create a conflict of juridiction between the EPO and the UPC by expanding the remit of the EPO beyond that defined by Article 69 so as to create trouble for the chair of the BOAs and the cooperation between the EPO and the UPC. I would not be surprised that some people at the EPO and the BOAs have become nervous at the good performance of the UP system and of the UPC. And it is true that the cooperation will entail challenges for the EPO esp. the acceleration of proceedings before the ODs and the BOAs in case of parallel proceedings to meet the very tight case management of the UPC.

If the UPC confirms its good track record so far in terms of both fast issuance, quality of decisions and cost, it might become the juridiction of choice on a worldwide scale. This would be of great benefit for the EPO in several ways. First, the EPO will be the granting authority for unitary patents. Second, the EPO also will be the only authority competent for assessing claim limitations and will thus be a significant player in the pre-litigation context.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

I will start in French because I am convinced you understand it better.

C’est vraiment l’hôpital qui se moque de la charité! Et pour ce qui est d’enfoncer les portes ouvertes, vous avez droit à une médaille d’or.

Your report of T 447/22 and T 1628/21 on IPKat is the best example of untruths one can find. Nothing you said about those decisions is correct!

You have not replied to any one of the numerous questions I have raised. Legal basis of decisions of the CoA and of the presidium, interpretation according to the VCLT. You are either blind or unable to understand the simplest questions.

I cannot see a prime conflict between the EPO and the UPC. They have fundamentally different tasks. One is pre-grant, and partially post-grant. One is exclusively post grant.

I doubt that the EPO is at all worried as any patent with unitary protection will be granted by the EPO. It will keep its business.

In case of parallel nullity proceedings at the UPC and opposition at the EPO, the EPO will have the last word when it comes to the validity of the patent.

It is rather the UPC which will have to be careful. It is nice to take quick decisions, but diverging decisions about the validity of a patent should be avoided. Not to say anything about the extraordinary cost of procedures before the UPC and the corresponding costs for representation.

Any further comment of yours here or in another part of my blog which does not tie up with the topic or which is beside the point might be deleted.

You have exhausted my patience!

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