EPO Opposition v.s. UPC Revocation
The implementation of the Unified Patent Court (UPC) provides another way to centrally invalidate a European patent in more than one European state. Pursuant to Art. 24(1) of the Agreement on a Unified Patent Court (UPCA), when hearing a case brought before it, the UPC shall base its decision on Union law, the UPCA, the EPC, other binding international agreement, and national laws. Although the reliance on the EPC may bring some similarity between the substantive analysis of the UPC revocation and the EPO opposition proceedings, the UPC revocation action, as an independent procedure, still will differ from the EPO opposition in many aspects.
In the absence of decisions from the UPC, we will focus mainly on the procedural differences between the EPO Opposition and the UPC Revocation.
1. Period and extent of Opposition/Revocation
| Aspects | EPO Opposition | UPC Revocation |
| Filing period | 9 months | Any time after the grant of the patent |
| Geographical scope | All 38 EPC member states | UPC member countries (17, potentially up to 24 in the future) |
| Scope of application | European patent |
|
The EPC mandates a strict opposition period of nine months from the date the European Patent Bulletin publishes the mention of the grant of the European patent (Art. 99(1) EPC). This narrow window requires parties interested in challenging a patent to act promptly. Once this period elapses, opposition cannot be initiated at the EPO. In contrast, the UPC allows for lodging of revocation actions at any time after a grant of a patent. This extended timeframe affords greater flexibility, enabling parties to file a revocation action years after the grant of the patent.
EPO opposition affects the European patent in all 38 member states of the EPC with a retroactive effect, making it a powerful tool for challengers wishing to impact the patent’s validity across a wide geographical area. On the other hand, the UPC’s revocation action applies to patents within the jurisdiction of UPC, which as of the last update, includes 17 countries with potential expansion to 24. Specially, the UPC has exclusive competence for the European patent with unitary effect and European patent which is not opt-out (Art. 3 UPCA).
In summary, while both mechanisms serve to challenge the validity of European patents, the EPO opposition is time-bound but broader in geographical scope, whereas the UPC revocation offers a more extended timeframe but a more limited geographical reach. This contrast necessitates strategic consideration, particularly for parties operating in multiple European countries or dealing with patents having long-term market implications. In certain situations, a dual approach might be necessary – filing the EPC opposition for wider geographical coverage and a UPC revocation for specific concerns within the UPC states.
2. Grounds for Revocation/Opposition
| Aspects | EPO Opposition | UPC Revocation |
| Legal basis | Art. 100 EPC | Art. 65 UPCA in conj. with
Art. 138(1) and Art. 139(2) EPC |
| Ground for Challenge | the subject-matter of the European patent
(a) is not patentable (Art. 52 to 57 EPC) (b) is not sufficiently disclosed (Art. 83 EPC) (c) extends beyond the content of the [parent] [earlier] application as filed ( Art. 123(2), Art.76(1), Art.61(2) EPC) |
the subject-matter of the European patent
(a) is not patentable (Art. 52 to 57 EPC) (b) is not sufficiently disclosed (Art. 83 EPC) (c) extends beyond the content of the [parent] [earlier] application as filed ( Art. 123(2), Art.76(1), Art.61(2) EPC) (d) the protection conferred by the EP has been extended, or (e) the proprietor of the EP is not entitled (Art.60(1) EPC) |
The EPO opposition proceedings are limited to certain grounds with respect to the substantive aspects of the patent. It does not include grounds related to national rights or post-grant scope extensions. However, the UPC, like the national invalidation proceedings, allows for a broader range of grounds for revocation than the EPO, which extends to the extension of the scope after the grant and lack of entitlement. Particularly, national prior rights in any of the UPC participating countries will be taken into consideration before the UPC. This makes UPC revocation a versatile tool for challenging a patent.
Thus, EPO opposition may be ideal for challenges based on fundamental aspects of patentability, added subject matter and sufficiency of disclosure. But if you need to address more complex legal issues related to the entitlement, post-grant extension of scope or specific national rights, the UPC revocation might be preferable. Of course, the dual approach is always available.
3. Parties involved in Revocation /Opposition
| Aspects | EPO Opposition | UPC Revocation |
| Who can file? | Any person from the public, except the patent proprietor can be filed by a straw man | Any person “concerned by a patent” |
| Intervention | Allows interventions of third parties | Not allowed |
| Counterclaim for revocation | n.a. | Allows for filing revocation as a counterclaim to infringement actions |
| Public openness | Oral proceedings are generally public.
All parts of the file are generally open for public inspection. |
Oral hearings are in principle open to members of the public.
Decisions and orders are open to the public. Access to written pleadings and evidence filed in the court requires a “reasoned request”. |
Before the EPO, any person from the public can file an opposition. This inclusive approach allows individuals or entities to challenge a patent without needing to demonstrate a direct commercial interest or personal conflict. Particularly, the EPO allows filing an opposition by a strawman to conceal the identity of the party actually interested in having the patent revoked. In contrast, the UPC revocation procedure permits any person “concerned by a patent” to initiate a revocation action but does not necessarily require an active conflict.
While dealing with multiple oppositions filed by different individuals and entities in a single set of proceedings, the EPO allows intervention of any third party in ongoing opposition proceedings after the 9-month opposition period has expired, if the third party proves that it is involved in national infringement proceedings with respect to the patent. The third party acquires identity as an opponent. On the other hand, equivalent regulations are not provided by the UPC. However, if infringement proceedings are pending before the UPC, the defendant may lodge a counterclaim for revocation of the patent as a means of defence and the competent UPC division may proceed with both actions.
The EPO opposition is highly transparent to the public. Oral proceedings in opposition proceedings are public, in so far as the opposition division does not decide otherwise. As the opposition oral proceedings will be held by videoconference by default, the public may gain remote access to the oral proceedings using a link provided upon request, subjected to certain conditions and timelines. Meanwhile, UPC oral hearings are in principle open to members of the public but may be held behind closed doors in certain cases.
As for the file inspection, generally all parts of the file complied when conducting the opposition procedure with the parities are open for inspection via the EPO register as long as the parts of file are not excluded from inspection. Conversely, access to written pleadings and the evidence filed in the court is not automatically granted to the public. Instead, it requires a “reasoned request” to be submitted to the Registry of the Court (Rule 262 RoP UPC). This request is evaluated by the judge-rapporteur, who consults with the parties involved in the case before making a decision. Recent decisions by the UPC have demonstrated a cautious approach to grant access to files, which may indicate a tendency towards protecting the interests of the involved parties.
4. Where to file Opposition/Revocation
| Aspects | EPO Opposition | UPC Revocation |
| Where to file? | Directly with the EPO
|
(1) UPC Central Division
(2) the same local or regional division where the infringement action has been brought before. (3) parties may agree to bring revocations before the division of their choice. |
| Counterclaims for revocation | n.a. | The same local or regional division where the infringement action has been brought before. |
In the EPO opposition procedure, the notice of opposition must be filed online or in writing with the EPO (Munich, The Hauge or Berlin). The situation in the UPC is more complicated. Art. 33(4) UPCA outlines that actions for revocation shall be brought before the central division. Amended Article 7(2) and Annex II UPCA further demonstrates that the distribution of cases with the Central Division as follow based on the IPC classification of the patents:
| Milan Section | Paris Seat | Munich Section |
| President’s Office | ||
| (A) Human necessities, without supplementary protection certificates | (B) Performing operations, transporting | (C) Chemistry, metallurgy, without Supplementary protection certificates |
| (D) Textiles, paper | (F) Mechanical engineering, lighting, heating, weapons, blasting | |
| (E) Fixed constructions | ||
| (G) Physics | ||
| (H) Electricity | ||
| Supplementary protection certificates |
If, however, an action for infringement between the same parties relating to the same patent has been brought before a local or a regional division, the revocation action or counterclaim for revocation may only be brought before the same local or regional division. The lodging of the documents needs to be conducted via the electronic Case Management System (CMS) of the court. Where the CMS system has ceased to function, a party may lodge a document in hard-copy. Art. 33(7) UPCA also provides that parties may agree to bring revocation actions before the division of their choice, including the central division.
In summary, the EPO operates with a centralized filing while the UPC offers more diverse filing locations depending on the case specifics. It is crucial to determine the correct division to file in. Engaging a legal professional with experience in UPC procedures and staying tuned with the UPC’s procedural rules is highly recommended.
5. Language of Opposition/Revocation
| Aspects | EPO Opposition | UPC Revocation |
| Language of proceedings | The official language of the EPO (EN, DE or FR) in which the application is filed, or into which it is subsequently translated | Before the central division, the language in which the patent concerned was granted (EN, DE or FR) Before any local or regional division,
|
| Language of the written procedure | The notice of opposition can be filed in
Evidence documents may be filed in any language |
The statement for revocation shall be drawn up in the language in which the patent was granted (Rule 45 RoP UPC)
Wherein the parties have agreed to bring the actions before a local or a regional division (Art. 33(7) UPCA), it shall be drawn up in one of the languages designated to conduct the proceedings (Rule 14.1 (a) and (b) RoP UPC) Written evidence shall be lodged in the language of the proceedings unless the Court or the RoP provide otherwise. The divisions may dispense with translation requirement |
| Language of oral procedure | Any party to the oral proceeding may use:
|
Any party may use other languages providing that a Request for simultaneous interpretation is lodged in due time or the party makes provision for interpreting at its own expense. |
| Interpreter | EPO provides for interpretation at its own expense for parties use one of the EPO’s official languages other than the language of the proceedings, if the EPO is noticed on due time
The party can engage an interpreter at its own expense |
The court may organize simultaneous translation on request of the party, the costs are the cost of the proceedings.
If the request is refused, the party may arrange or request the court to arrange interpreters at its own cost |
In the EPO opposition proceedings, the opponent can use any of the EPO’s three official languages (EN, DE and FR) to draft and file the notice of opposition. In addition, opponents satisfying the criteria under Art. 14(4) EPC may file the notice of opposition in any admissible non-EPO languages, provided that a translation into one of the EPO’s official languages is submitted within one month. Documents as evidence may be filed in any language. In contrast, the UPC requires that the statement of revocation and the written evidence shall be drawn up in the language of which the patent was granted or the language designated by the local or regional division before which the action is brought. Since it is exceptional for a challenger to inform the patent proprietor before bringing a revocation, the written statement and the written evidence, under most cases, will be drafted in the language of the patent. This may incur additional translation costs.
As for the oral proceedings, the EPO provides for, at its own expense, simultaneous interpretations in any of its official languages other than the language of the proceedings, provided that the party has requested at least one month before the date of the oral proceedings. If all parties are going to use another official language, the opposition division may depart from the language of the proceedings so as to manage without or with fewer interpreters. The opponents can also use other languages on that condition that they make provision for interpreting into the language of the proceedings. Similarly, the UPC may organize simultaneous translation on request of the party. If the request is refused, the party may arrange or request the court to arrange at its own cost. Nevertheless, when adopting each of or both the approaches, it is important to weight the potential need for translation and the implications for international legal strategy.
6. Cost of Opposition/Revocation
| Aspects | EPO Opposition | UPC Revocation |
| Filing/Court fee | 880 EUR (valid at 10.11.2023) | 20,000 EUR |
| Reduction of court fee | n.a. | 40% reduction for Small and Micro-entities
Up to 60% reduction in cases of:
|
| Bearing of the cost | Each party generally bears its own cost | The prevailing party is entitled to cost reimbursement form the losing party |
Regardless of the corresponding costs for patent attorneys/attorneys, translations and simultaneous interpretations, the official fee for filing an EPO opposition is significantly cheaper than the court fee for lodging a Revocation before the UPC. On the other hand, while each party to the EPO opposition generally bears its own costs, the winning party in the UPC is entitled to cost reimbursement from the losing party. Hence, leveraging the cost apportionment rules can help recoup some expenses in promising cases. The scale of ceilings for recoverable costs is set force in the Annex to Scale of ceiling for recoverable cost, 24 April 2023 (see below), and shall apply to representation costs.
| Value of the proceedings | Ceiling for recoverable costs |
| Up to and including 250,000 € | Up to 38,000 € |
| Up to and including 500,000 € | Up to 56,000 € |
| Up to and including 1,000,000 € | Up to 112,000 € |
| Up to and including 2,000,000 € | Up to 200,000 € |
| Up to and including 4,000,000 € | Up to 400,000 € |
| Up to and including 8,000,000 € | Up to 600,000 € |
| Up to and including 16,000,000 € | Up to 800,000 € |
| Up to and including 30,000,000 € | Up to 1,200,000 € |
| Up to and including 50,000,000 € | Up to 1,500,000 € |
| More than 50,000,000 € | Up to 2,000,000 € |
7. Procedures of the Opposition/Revocation
Normally, after the 9-month opposition period expires, the EPO will invite the patent proprietor to file observations and amend the patent within a period of nine months. These submissions will then be communicated to all the parties to the opposition proceedings and the EPO will invite them to reply. After certain rounds of written communication, the opposition division may issue their preliminary opinion, and set a date for the oral proceedings under the request of the parties. The EPO aims to limit the substantive examination of the opposition within the timeframe of 15 months. But the consolidated processing of multiple oppositions with respect to the same patent may inevitably require longer periods.
A more compact schedule is adopted by the UPC. For the first round of communication, the defendant shall lodge a Defence to revocation within two months of service of the Statement of revocation. The Defence may include an application to amend the patent or a Counter claim for infringement (Rule 49 RoP UPC). Optionally, within 2 months of service of the Defence to revocation, the claimant (challenger) may lodge a Reply to the Defence and the defendant may lodge a Rejoinder to the Reply within one month of the service (Rule 51 and 52 RoP UPC). After the written procedure, the judge-rapporteur shall, after consulting the parties, set a date and time for an interim conference and set a date for the oral hearings (Rule 54 and 28 RoP UPC). The written decision shall be expected within six weeks after the oral hearing.
In terms of efficiency, the UPC revocation procedure stands out for its expeditious nature compared to the EPO opposition. The accelerated timeline in the UPC revocation may offer distinct advantage for parties seeing a rapid resolution.
8. The stay of the Revocation in view of a pending opposition/the parallel procedure.
The UPC requires a party to inform the court of any pending revocation, limitation or opposition proceedings before the EPO and may stay its revocation proceedings when a rapid decision may be expected from the EPO. However, considering the relative quick processing of the UPC revocation, it will be very likely not stayed due to the EPO opposition filed at the same time. It is not yet clear how and to what extent the UPC revocation will influence the parallel opposition proceedings.
In conclusion, while both EPO opposition and UPC revocation serve the purpose of challenging patent validity, their process, timelines, costs and strategic implications differ significantly. UPC revocation, being court-based, offers an expeditious judicial approach with broader scope for challenging patents. However, the process can be costlier.
Practically speaking, stakeholders should consider these avenues carefully. If cost is the major concern, especially for SMEs or individual inventors, EPO opposition might be the more viable route. However, for larger entities or in cases where a rapid solution is necessary, UPC revocation might be more appropriate. A dual approach is also available within the 9 months opposition period. We would be delighted to provide legal advice tailored to your needs and the specific circumstances of the case.
Our authors:
Andreas Gagidis
Partner, Patent Attorney
Yanjie Li
Trainee Patent Attorney