Impact on challenging patents
1 March 2016
Currently, the validity of a European patent can be attacked in a number of ways. For instance, during the EPO procedure, 3rd party observations at the EPO can be filed, and after grant, there is a 9-month opposition period. Outside the EPO, after grant, actions for revocation and declarations of non-infringement can be brought in the courts. Additionally, in the UK, the UK Patent Office is able to revoke the EP(UK) validation and can also issue non-binding opinions regarding validity and infringement under Sections 74A. Some of these options will be affected by the UPC
- 3rd party observations and oppositions will continue to be available on all patents.
- Oppositions as a central revocation will also continue and may become more important.
- The patentee will be able to determine whether the revocation action can be brought in the UPC or national courts.
Central Opposition After UPC
The EU patent package does not affect the pre-grant procedures, so 3rd party observations will continue to be an option. Also, the opposition period will continue. This means parties looking to revoke a competitor’s patent can still do it centrally at the EPO, irrespective as to whether the competitor opts for UP or classically validates with or without an opt-out.
Where competitors opt for a Unitary Patent, or classically validate without an opt-out, within the first 9-months, there is a choice between revoking the patent in opposition proceedings and revoking the patent at the UPC. Given the UPC fees for revocation will be around £15,600 (€20,000), EPO oppositions will be the lower cost option.
It is therefore likely that EPO oppositions will become a more important forum and competitor watches can be set-up to alert you to the opposition period.
Revocation Options After UPC
The option on courts will be determined by the patentee. If UP is requested, the patent will only be able to be revoked at the UPC. If the patent has been classically validated, the patent will need to be revoked through the UPC unless the patentee has opted-out.
If the classical validation has been opted-out, the current national procedures will apply.
UKIPO Opinion Service
The UKIPO opinion service is used by parties as a quick, low cost, but high quality independent view of a dispute. The service can be used to obtain opinions on validity and infringement of UK and EP(UK) classical validations.
The current draft legislation to implement the EU patent package in the UK maintains the opinion service and will therefore allow anyone to request a validity and infringement opinion against any granted European Patent irrespective of the validation option. That is, the opinion service will be available for Unitary Patents as well as classical UK validations whether or not they have been opted-out.
Although the opinions are non-binding and do not therefore have to be followed by subsequent tribunals, parties may choose to request an opinion, as they do now, to add weight or pressure to the other side before issuing proceedings. Notwithstanding the danger of getting the wrong answer, the Opinion service is likely to continue to be of benefit to parties after the UPC enters force.