How can you mitigate the risk of a successful invalidity attack at the UPC?

One of the questions we’re hearing more and more frequently from clients is: What can we do in drafting and prosecution to make sure our European patents are fit for litigation at the UPC?

It’s difficult to know at the time of drafting a patent application whether you’re going to end up in court enforcing it against an infringer, or defending its validity at some point in the future. Having said that, based on the decisions we’ve seen so far at the UPC, there are some things that you can do to improve your chances of success in the UPC.

You need a granted European patent

Firstly, you need to get your European patent granted by the EPO before it can be enforced or attacked in the UPC. That means that your application needs to meet the EPO’s requirements of:

• Novelty;
• Inventive step;
• Sufficiency of disclosure; and
• Clarity.

Any amendments made during the prosecution of the application need to meet the EPO’s strict requirement not to add subject matter that was not disclosed in the application as originally filed. We’ve seen from the first few decisions on the merits that the UPC is adopting a similar approach to the EPO on added subject matter, so getting this aspect right during prosecution is critical.

Grounds for revocation

Grounds for revocation of a European patent at the UPC include:

• Lack of novelty;
• Lack of inventive step;
• Added subject matter; and
• Lack of sufficiency of disclosure

There’s not much you can do to stop another party in UPC proceedings from citing new prior art that may be relevant to the novelty or inventive step of your patent.

However, there are steps you can take in the drafting and prosecution of your application that may help to reduce the risk of a successful invalidity attack based on lack of sufficiency of disclosure or added subject matter in proceedings before the UPC.

Detail needed when drafting and prosecution of your application

When you draft your application, ensure you include enough detail for the invention to be put into practice by the skilled person.

That means making sure that the application describes at least one, and preferably several, examples of the invention, with a detailed explanation of its structure, construction and operation, as well as alternative approaches that achieve the same technical effects.

The more detail you include in your specification at the outset, the more material you will have to point to when rebut an argument that the patent doesn’t disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Care when amending your application

You should also take care if you amend the application during prosecution that the amendments don’t add any material that was not present in the application at the time of filing. One way to check for added subject matter is to ask whether the application as amended includes any information that wasn’t present in the original application.

The EPO is, of course, strict on this requirement, but you should remember that it’s the applicant’s responsibility to ensure that the amendments comply.

In particular, I recommend that you take extra care about accepting amendments proposed by the Examining Division. The fact that an amendment was proposed or approved by the EPO isn’t a defence to an added subject matter attack at the UPC, and you wouldn’t want your patent to be revoked on the basis of added subject matter because of an amendment made by the EPO.