Challenging of European patents

A situation that may arise for a company is the identification of a European patent application that is soon to be granted by the European Patent Office (EPO), or an already granted European patent, which could potentially hinder the company’s business activities. This identification might result, for example, from patent watching searches used to monitor the patenting activities of competitors. In such a case, the company may wish to challenge the validity of the European patent to revoke it entirely or at least narrow its scope of protection, thereby reducing the risk of it posing a hindrance to the company’s business operations.

‍Under the European Patent Convention, the validity of a European patent may be challenged by filing an opposition against the European patent with the EPO. An opposition must be filed within nine months of the mention of grant of the European patent and may be filed by anyone except for the proprietor of the European patent. The opposition may for example be based on the ground that the subject matter of the European patent is not patentable, i.e., is not novel or obvious, in the light of any information available to the public before the application for the European patent was filed, which information might not have been found during the grant proceedings at the EPO. The outcome of the opposition procedure in the first instance (in general maintenance of the European patent as granted or as amended during the opposition proceedings, or revocation of the European patent) will have effect in all states in which the European patent was validated.

‍Unified Patent Court (UPC): A New Avenue for Revocation

‍However, with the relatively recent opening of the Unified Patent Court (UPC) on 1 June 2023, another possibility for challenging the validity of a European patent has arisen. After the opening of the UPC, it has been possible to request unitary effect of European patents with the EPO that will have effect in the EU Member States participating in enhanced co‑operation and having ratified the Agreement on a Unified Patent Court (UPCA). Currently, the UPCA is in force in seventeen EU states, which may be referred to as the UPCA states (on 1 September 2024, Romania will be added to the UPCA states making the UPCA to be in force in eighteen EU states). The validity of a European patent – for the UPCA states – may be challenged by filing a revocation action with the UPC. The revocation action may be filed by any natural or legal person other than the proprietor of the European patent who is concerned by the European patent. In contrast to an opposition before the EPO, there is no time limit for filing a revocation action with the UPC following the grant of the European patent. A UPC revocation action may hence be filed at any time after grant of the European patent, and independent of any opposition procedure with respect to the European patent that may be ongoing before the EPO. Therefore, UPC revocation action proceedings and EPO opposition proceedings may run concurrently. The available grounds for an UPC revocation action are similar to the available grounds for an EPO opposition. The outcome of the UPC revocation action in the first instance will have effect in all UPCA states where the European patent has been validated, or, if unitary effect of European patent has been requested, in all UPCA states. However, it is to be noted that it currently is possible to opt European patents for which unitary effect has not been requested out of the UPC’s jurisdiction, in which case an UPC revocation action would not be possible.

‍Considerations for Choosing Between EPO Opposition and UPC Revocation

‍Thus, if a European patent is considered to be potentially hindering/problematic for a company’s business, and if unitary effect has been requested for the European patent or if the European patent has been validated in one or more states and not opted out from the UPC’s jurisdiction, it may be considered to (1) file an opposition before the EPO (if the nine month period from the mention of grant of the European patent has not yet expired), (2) file a revocation action with the UPC, or (3) file both an opposition before the EPO and a UPC revocation action. Assuming there to be one or more grounds for opposition/revocation which are considered to have a good chance of successfully challenging the validity of the European patent, the question then arises what to consider when choosing to challenge the validity of the European patent before the EPO and/or before the UPC.

‍How important is the European patent to the company’s business?

‍In case the scope of protection of the European patent would be considered to be highly hindering/problematic for the business of the company, it may be considered to challenge the validity of the European patent before both the EPO and the UPC. Indeed, an UPC revocation action offers a further chance of invalidating the European patent and may be filed at any time after grant of the European patent and may be pending concurrently with EPO opposition proceedings. A disadvantage is of course the costs involved with two separate procedures for trying to invalidate the European patent. The EPO’s fee for the opposition is currently 880 EUR, while the UPC’s fee is considerably higher and currently at 20000 EUR. While the UPC’s fee for the revocation action is considerably higher than the EPO’s fee for the opposition, for a UPC revocation action the successful party can recover reasonable costs it has incurred from the other party, up to a ceiling which depends on the value of the case. For EPO opposition proceedings on the other hand, each party normally bear its own costs. If the scope of protection of the European patent would be considered to be less hindering/problematic for the business of the company, it may be decided to only file an opposition before the EPO due to its lower official fee as compared to that of an UPC revocation action. The option to file an UPC revocation action would however still remain, as it may be filed at any time after grant of the European patent.

‍How important is it to obtain a final decision?

‍Both the EPO opposition and the UPC revocation action are essentially written procedures with an oral hearing tacking place at the end. Compared to EPO opposition procedures, UPC revocation action procedures will however be faster in reaching an outcome in the first instance, mainly due to tighter deadlines in filing responses during the written procedure. The UPC aims at issuing a decision on a revocation action in the first instance within 12 months after the action has been brought by the challenger of the European patent. Further, in case the first instance decision on the UPC revocation action is appealed, a final decision can be expected within about two and a half years. For EPO opposition proceedings, a decision in the first instance can normally be expected between about 18 months and three years from the filing of the opposition, and appeal proceedings if any will take about two and a half years to four years. Therefore, if it would be important to obtain legal certainty that the European patent has been finally revoked or limited as soon as possible, filing of an UPC revocation action may be preferable over filing of an EPO opposition.

‍What kind of Prior Art is available for challenging the European patent?

‍As mentioned, the available grounds for an UPC revocation action are similar to the available grounds for an EPO opposition. One difference however lies in the types of so-called prior art documents that may be used to demonstrate that the subject matter of the European patent is not patentable. For both EPO oppositions and UPC revocation actions, publications such as patent documents published before the date of filing or priority of the application for the European patent may be relied on as evidence for demonstrating that the subject matter of the European patent is not patentable (e.g., that the subject matter is not novel or obvious in the light of such publications). In addition, for both EPO oppositions and UPC revocation actions, European patent applications, of which the dates of filing or priority are prior to the date of filing or priority of the application for the European patent and which were published on or after that date, can be used as such evidence, but the subject matter of the European patent must only be novel over such European patent applications but not necessarily non-obvious. Such European patent applications are often referred to as European prior rights. In UPC revocation actions, so-called national prior rights can also be used in the same way as European prior rights for demonstrating that the subject matter of the European patent is not patentable. National prior rights are national patent applications in one or more states designated in the application for the challenged European patent of which the dates of filing or priority are prior to the date of filing or priority of the application for the challenged European patent and which were published as national patent applications on or after that date. Such national prior rights may however not be used in EPO oppositions for challenging a European patent. Thus, if there are national prior rights for a European patent which are considered (highly) relevant to the subject matter of the European patent, it may be decided to file an UPC revocation action in which the patentability of the subject matter of the European patent is challenged based on the national prior rights.

‍Conclusion and Further Guidance

‍In the foregoing, some considerations for deciding whether to (1) file an opposition before the EPO, to (2) file a revocation action with the UPC, or to (3) file both an opposition before the EPO and a revocation action with the UPC have been discussed as general guidance. If you or anyone else has identified a European patent that may be potentially hindering/problematic for your company’s business, one or more of these as well as other considerations may apply to your particular case. If you would want more information on EPO opposition or UPC revocation proceedings in general, or if you need advice on challenging a particular European patent or patents, please do not hesitate to contact us.