The poll from Issue 1 of UPC Unpacked revealed this is one of the topics patent owners most want to learn more about. And we’ve responded.
James Ward has broken down the question and developed a brief comparative guide to EPO opposition and UPC revocation proceedings.
UPC Representative | UK and European Patent Attorney | Irish Patent Agent | European Design Attorney
Here’s a high-level reference guide to EPO opposition and UPC revocation proceedings. Separated into three sections, open up each question to learn the key features of each procedure, which gives you a side-by-side comparison of the EPO and UPC proceedings.
All European patents.
European patents which have been validated as:
(i) Unitary Patents; or
(ii) Individually in UPC participating states and have not been opted-out of the UPC.
All countries for which the European patent was granted.
(i) If a Unitary Patent, all countries covered by the Unitary Patent
(ii) If a European patent with national validations, those countries which are UPC participating states.
Yes – nine months from the date of grant, (Art. 99(1) EPC).
No.
Any natural or legal person, (Art. 99(1) EPC); ‘strawman’ opposition is possible, (G3/97; G4/97).
“Any…natural or legal person…who is concerned by a patent”, (Art. 47(6) UPCA); ‘strawman’ action likely not possible, no determinative case law yet.
Excluded subject-matter; lack of novelty; lack of inventive step; lack of enablement; new matter, (Art. 100 EPC).
Excluded subject-matter; lack of novelty; lack of inventive step; lack of enablement; new matter, (Art. 65(2) UPCA; Arts. 138(1), 139(2) EPC).
€880.
€20,000.
English, French or German, (Art. 14(1), Rule 3(1) EPC).
The language in which the patent was granted (most European patents grant in English, some in German, fewer in French), (Art. 49(6) UPCA).
An Opposition Division comprising three technically qualified Examiners, who are nationals of EPC states. Rarely, if particular legal issues arise, a legally qualified Examiner may be added to the panel, (Art. 19(2) EPC).
A panel of the Central Division having two legally qualified judges, who are nationals of different UPC participating states, and one technically qualified judge. The parties may agree to have the action heard by a single judge, (Art. 8(6), (7) UPCA).
Main stages usually comprise:
The parties can file submissions of their own volition at other times too. For example, the opponent may choose to file a response to the patentee’s reply before the Summons issues, or one party may choose to reply to the other party’s final written submissions.
Main stages are:
Usually ViCo and usually for one day.
In-person and intended to be one day. ViCo allowed, but unlikely to be favoured by parties.
In Munich, the Hague, or Berlin, but hearing is usually by ViCo.
In Paris, Munich or Milan, depending on the technical field of the patent.
~ 18 months to 3 years from filing opposition.
Court aims for a decision within 12 months of action being brought.
Yes, on written reasoned request. In particular, if there are parallel infringement or revocation proceedings at the UPC or a national court.
UPC aims for a decision within 12 months on all cases. The Court can stay a case if a rapid decision is expected from the EPO.
Default is that each party pays its own costs, (Art. 104 EPC).
Successful party can recover its reasonable costs from the other party, up to a ceiling that depends on the value of the case, (Art. 69(1) UPCA).
Yes.
Yes.
Formal notice of appeal and payment of the fee within two months of the decision; reasoned statement of grounds within four months of the decision, (Art. 108 EPC).
Formal statement of appeal and fee payment within two months and reasoned statement of grounds of appeal within four months of notification of the decision, (Art. 73(1) UPCA; Rule 224 UPC RoP).
€2,925.
€20,000.
One legally qualified and two technically qualified members of a Board of Appeal, being nationals of EPC states; if the Opposition Division had four members, then three technically qualified and two legally qualified members of the Board of Appeal, (Art. 24(4) EPC).
Three legally qualified judges and two technically qualified judges of the Court of Appeal, (Art. 9 UPCA).
Only exceptionally.
Only exceptionally.
Yes.
Yes, (Art. 73(3) UPCA).
In-person and usually for one day (ViCo is also possible).
In-person and intended to be one day. ViCo allowed but unlikely to be favoured by parties.
Munich.
Luxembourg.
For more information on EPO opposition or UPC revocation proceedings in general, or if you require advice on challenging a particular patent or patents at the EPO or UPC, please contact our team.
This is for general information only and does not constitute legal advice.
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