In a position paper published on 23 December 2020, the IP Federation in the UK has expressed concern about the uncertainties surrounding the Unified Patent Court. According to Scott Roberts, president of the IP Federation, the value of the project has diminished considerably for its members. Kluwer IP Law interviewed Roberts.

The position paper states “Whilst it appears there are prospects for the UPC to come into force despite the UK’s withdrawal, there are many open questions which bear on whether, when, and in what form that might happen. The IP Federation would like to see these resolved in the near future. In view of the degree of uncertainty presently surrounding the project, the IP Federation is awaiting further developments with interest and looks forward to commenting in more detail when the final form of the project is clear.” Could you explain what the ‘open questions’ are the IP Federation would like to see resolved? And what ‘the degree of uncertainty presently surrounding the project’ refers to? 

“The IP Federation has long been a keen advocate for the UPC package, and always with the UK in it.

Our members recognise the considerable erosion in value since the withdrawal of the UK’s ratification. The withdrawal of the UK ratification was a real blow and was a political decision in the context of Brexit where the UK removes itself from the jurisdiction of the CJEU.

There are two sources of considerable uncertainty that we believe need to be resolved:

Firstly, the uncertainty surrounding the potential for any future participation of the UK, should political-will evolve.

Secondly, the uncertainty following the constitutional complaints filed on Friday 18/12. In this respect it is noted that the previous complaint by Ingve Stjerna consumed 3 years of the Bundesverfassungsgericht’s time. While these complaints may be summarily dismissed if the Court finds that appropriate (and that is a question for the BVerfG, certainly not the IP Federation), if the complaints are heard they could constitute a test of resilience for the enthusiasm of current and prospective UPCA signatories. That test of resilience is further compounded by the possibility of success of the complaints – which could serve to fundamentally undermine the very existence of the UPC.”

‘When the final form of the project is clear’; when do you expect that to be?

Scott Roberts

“We must wait to see the outcome of the constitutional complaints. If they are dismissed, then the UPC may proceed and we encourage the door for future UK participation is kept ajar – though we acknowledge that there would need to be a new political will in the UK and a political will to accommodate the UK in other UPCA states.

On the other hand, if the complaints are not dismissed, then a revisiting of the UPCA may be required and, again, we strongly encourage that the door for future UK participation in any future unified patent court is kept ajar.”

Is it a coincidence the position paper has been published on the day the news broke about the two new constitutional complaints in Germany against ratification of the UPCA? It has been speculated that the political will to persevere with the Unitary Patent project may disappear if there are new long delays due to these complaints. 

“The timing is coincidental though the issues and uncertainty remain fundamentally the same. The prospect of constitutional complaint was well-known before Friday.”

Is the publication of the position statement linked to the Brexit?

“Not directly, no.”

Whom is the position paper addressed to? Who must provide the answer to the IP Federation’s questions? The European Commission? The UPC Preparatory Committee? The patent industry in the UK and/or in Europe?

“The IP Federation seeks to keep governments, patent granting authorities and patent users appraised of its position on important issues through its published policy positions. In addition to that, we represent our views more directly to those stakeholders.”

Is the position paper perhaps a cautious way to say that the IP Federation thinks “a cost effective, high quality and balanced IPR framework is a critical component in industry’s present and future successes in the global economy and in social progress”, but this framework is not necessarily the Unitary Patent system anymore, now that the UK is out, there are legal uncertainties and perhaps new delays?

“The Unitary Patent system has value even without the UK in it, though without the participation of the UK it is considerably devalued.

Whereas the UPCA dramatically simplifies enforcing rights consistently across European economies, the absence of the significant economy of the UK has a huge impact for rights-holders and third-parties. There are also disadvantages for the UPC itself: the loss of the close involvement and influence of the UK’s judiciary (which is acknowledged to be among the most respected in the world) will have consequences for the quality of UPC decision making. Further, the UK will no longer be part of a system that will inevitably exert influence on other international and domestic arrangements. Landmark decisions of the Unified Court will exert some influence on judicial decisions and policy at the EPO, for example, and there will be a dearth of UK judicial influence in those Unified Court decisions.

It is the compounded effect of the uncertainties I described earlier, the prospect of prolonged delay due to the BVerfG complaints, and these sources of erosion of value that cause us to question whether, when and in what form the UPC might come into force.”

Wouldn’t it be more logical for the IP Federation to support a European patent system including non-EU-member states, in the framework of the EPC?

“IP Federation members are hugely supportive of the inclusive European patent system constituted under the EPC and the Strasbourg Patent Convention and we see this system as a basis for the high-quality and balanced patent framework critical to the success of industry operating in Europe. The UPC is an adjunct to that and we support the UPC being available to non-EU member states including the UK where political will allows.”

_____________________________

To make sure you do not miss out on regular updates from the Kluwer Patent Blog, please subscribe here.

Kluwer IP Law

image_pdfimage_print

18 comments

  1. It is very interesting to note that the Who’s Who of British Industry is regretting Brexit, which is understandable.

    Not only the IP Federation regrets Brexit but also all the British lawyer firms who had a big finger in the UPC pie. They will not be able to represent before the UPC and all their dreams of increased income is now lost to their friends on the continent.

    It is quite ironic to see that the procedure before the UPC has been strongly influenced by the British litigation procedure, but the Brits have now left. Some of the comments heard after Brexit were to remove this aspect from the procedure before the UPC.

    On the other hand what the IP Federation wishes is actually the opening of the UPC to non-EU member states. This sounds to me that they would like the EPLA to be revived again. I fear this wish cannot be exhausted, as the EPLA is dead as dead can be (think of the Monthy Pytons), having been killed by the CJEU in its famous opinion C 1/09.

    When the IP Federation thinks that “Landmark decisions of the Unified Court will exert some influence on judicial decisions and policy at the EPO, for example,” it forgets that the EPO is an independent granting authority as well as an authority equally able, albeit only in opposition proceedings, to decide on the validity of granted EP/UP titles. The EPO is only bound by the case law of its boards of appeal, and especially of its Enlarged Board of Appeal, and there is no mechanism which could impose on the Boards case law stemming from other courts.

    The possible conflict of case law between the UPC and the Boards of Appeal of the EPO has always been there, but has been superbly ignored. Exactly as the Courts of the EPC member states are not bound by decisions of the boards of appeal of the EPO, the latter are not bound by the former ones. Just think of the differences between the case law of the German Federal Court and the EPO in matters of added subject-matter. Why should it be different between the UPC and the boards of appeal of the EPO? Even if it was the opinion of Sir Robin Jacob at one of the Munich conferences on the UPC that the UPC will become the leading court in Europe. By then UK had not withdrawn from the UPC.

    On the other hand, the docility of the Enlarged Board of Appeal which went as far as saying that although it approved G 2/12 and G 2/13, a “dynamic” interpretation of those decisions lead to say exactly the opposite in G 3/19, does not bides well for the independence of the boards of appeal of the EPO. This decision was arrived at under the pressure of the Administrative Council and the President of the EPO. Who says that case law of the UPC would be more independent of that of the EPO when the mechanism of designation of its judges and their re-appointment is similar than the one of the members of the boards of appeal.

    It might be desirable to have some unification in case law in IP matters, but certainly not what is presently pushed by UPC lobbyists who ignore the letter and the spirit of the treaty they want to see entering into force. And this only to fill their pockets.

  2. Isn’t that a sad comment. It’s not a surprise that industry or law firms oppose Brexit: they have openly done so from the outset. Those who support it are mostly not employed in any industry affected by patents, or by trade. Schadenfreude is fun, but not if you are enjoying the discomfort of the wrong people.

    As for whether the UPC might one day encompass all EPC member states: it is possible, desirable and not beyond the wit of man, even is certain (changeable) aspects of the UPLA may make need to be changed. There is nothing inherently unconstitutional about international dispute resolution: we arbitrate every day.

    The real objection to a wider UPC seems to be narrow self interest of some private practice lawyers who think they personally benefit from a smaller UPC. It’s a mistake to think that the danger of broadening is that the UK firms will take the business: almost all of the UK firms who do patents are also German, French and Dutch: they will be there whatever happens. Keeping Bristows and Powell Gilbert out can’t really be that significant. But the advantage of broadening is huge: it puts EPs above US patents as valuable assets.

    Lets keep pushing for greater harmonisation.

    1. Agreed.

      Just in case there is any doubt, my criticism of the UPC is not to be taken as resistance to greater harmony in Europe. Quite the reverse.

      In fact, now that the UK is out of the EU, the way is clear for the EU to harmonise not only its law on patent validity/patentability, but also its law on patent infringement. For validity, nothing the CJEU could do could improve on the established jurisprudence of the EPO. Leave it alone. Compared with the complexity of validity, trying infringement is a cakewalk. It should be quite easy, now, on the Mainland, with the help of Ireland, to harmonize that.

      Coincidentally, there is a piece today in a US patent law blog (link below) where you can read how it was China, quite recently, that invented the Problem-Solution Approach to inventive step. Unless Europe (gets its act together” it will be eaten for breakfast by the Rest of the World.

      Wake up Europe. EU Member States, marching in step is the way towards greater prosperity. Allow yourself to be divided and you will be picked off, one-by-one.

      https://www.ipwatchdog.com/2020/12/26/inventive-step-chinese-patent-law-compared-u-s-non-obviousness-standard/id=128454/

    2. One of the main objections to the current UPC is that it is legislation created by lawyers for lawyers (and in their own narrow self-interest), which legislation is manifestly deficient in important areas, including democratic legitimacy, access to justice and equality of arms … not to mention clear problems vs EU laws and national constitutions.

      Harmonisation is a worthy objective. But let us not pretend that it is an objective worth pursuing at any cost, or by way of legislation as horribly compromised as the UPC Agreement. Better to start again from scratch and to design legislation that, in contrast to the UPCA, is actually fit for purpose.

  3. Attentive, I’m worried about the balance of forces, between those who wish to see stability in Europe, and those who wish actively to de-stabilise it. Those in the latter camp must be rubbing their hands with glee, at the way in which Europe is so busy de-stabilizing its own patent law, all by itself.

    For the USA and China, for example, a stable Europe is a nuisance. For all those States lying along the eastern borders of Europe, States with no experience of representative democracy or the Rule of Law, a stable Europe insisting upon those basics of human rights is a constant irritation. For the UK, now fully “open for business” from the world’s worst regimes, their tax-evading citizens and their progeny in need of a “world-beating” education, the rival attraction of a stable Europe is a nuisance. If Europe’s patent law falls into disarray, this is all grist for their mill, to show how, quite simply, mainland Europe is a Trumpian LOSER.

    Thinking back to what has been achieved since 1973, the triumph of the EPC, it makes me sad to see the present decline. The lobbyists are expert at presenting the interests of their sociopathic corporate clients as being in the interests of society’s “general welfare” (to use the splendid expression found in the Constitution of the USA). Sadly, today, none of the three branches of The State (legislative, adjudicate, administrative) is any longer wise enough, or well-informed enough, to see through the blandishments and wiles (and bribes) of the lobbying industry. There is no longer any urge to resist. Instead, there seems to be a race, who can be of most service to the sociopathic moneybags clients of the lobbyists.

  4. I am the last to be against harmonisation in IP matters over the whole of the EU and of Europe in general. But a revived EPLA is not on the table. One might regret it, like Brexit, but the CJEU made clear that it is not compatible with Union law. Although I fully understand “European Industry advocate”, I do not see a possibility to revive the EPLA.

    Dear Max Drei, with the UPC in its present cladding, the way is by no ways “clear for the EU to harmonise its law on patent validity/patentability”. And this is for two reasons: the UPC does not apply to the whole of the EU and there is another instance which is able to decide upon validity of patents having effects within the EU, i.e. the EPO, albeit only during oppositions, but at the fraction of the cost of an action before the present UPC. Whether UK has left the EU is irrelevant in this matter.

    The problem is that by separating the grant of the title with the exploitation of it, the fathers of the EPC made it nearly impossible to unite the granting system under the EPC, which is a convention open to non-EU member states, with the specificity of Union law and its necessary adherence to CJEU rulings valid exclusively within EU member states. The juxtaposition of two instances deciding on validity/patentability is the original sin of the UPC.

    A real unification could be reached as far infringement is concerned by for instance installing a general bifurcation. A court like the UPC could decide on infringement and issue judgements valid over the whole of the EU, whereby the EPO would decide on validity for all EPC member states, i.e. covering not only EU member states but many more European states.

    This would not only need a revision of Art 99 EPC, but also to guarantee the independence of the Boards of Appeal. This is not the case presently under R 12c and 12d. As the judges sitting at the UPC are as well to be re-appointed, their independence is also at stake.

    For non-EU members, infringement would still remain a national issue as EPLA is dead.

    Such a solution would however not be of liking of all the lawyers firms, and not only in the UK, as they would only be dealing with infringement as is presently the case, and not any longer on validity. It is therefore necessary to highlight “the narrow self-interest of some private practice lawyers who think they personally benefit from a smaller UPC”.

    Those people claim that the UPC is compatible with EU law, but it has never been tested beforehand. I wonder why the UPC has not be sent to the CJEU for opinion as it was the case for the EPLA.

    It has occurred in the past that the Implementing Rules of the EPC were amended after issuance of legislation only valid within the EU, cf. Directive 98/44/EC and the following “Brüstle” decision of the CJEU, cf. R 28(1). Art 28(1) clarified the issues under Art 53(a).

    R 28(2) was adopted by the Administrative Council of the EPO following a Notice issued by the EU Commission that the EU legislator’s intention when adopting Directive 98/44/EC, was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes. Art 28(2) clarified the issues under Art 53(b) which was however in contradiction with decisions G 2/12 and G 2/13 of the EBA. G 3/19 is the result of the unwillingness of the member states of the EPC to amend Art 53(b) accordingly.

    In both cases there was a consensus going further than just the EU member states and including all EPC member states.

    It is however not guaranteed that such a consensus will be reached in all questions and following any decision of the CJEU or the UPC. Such decisions are not directly applicable with full effect at the EPO, especially now after the Brexit is becoming effective and UK being still a member state of the EPC.

    Here again the fundamental discrepancy between the grant and the exploitation of the EP is a hurdle which cannot be overcome with Art 142-149 EPC.

    1. Dear Attentive,
      this could be an idea to think about. But I fear, that the combination of EPC/EPO and UPCA is by now too much of a mess.
      The presidents (the current and – especially – the former) have shown they are not to be bound by anything in a legal text. Consequently, the EBoA has stopped to pretend it is a judicial body (“we can not decide, because we fear for our jobs”). So, the current structure certainly can not be kept to decide on an EU-IP-right. But at the moment the BoAs are separated from the EPO: Why should the ECJ agree, that in this case a non-EU-court (with non EU-citizens as judges) is allowed to decide in these matters? And if it is restricted to an EU-court, wht would the other member-states of the EPC say?
      As a design-engineer I quickly learned, that you have to start with a clean ans symple plan (KISS-principle). When fleshing out the details, it will invariably get complicated enough. The problem with the UPCA is, that to me it seems the agreement was designed to keep lawyers from every country happy – the goal should have been to design a reliable, fast procedure with reasonable costs. IMHO, this is what industry needs…

  5. Thanks, Attentive. Bifurcation. Indeed. For as long as the UK was an EU Member State, its opposition to bifurcation would have been implacable. That problem has now gone away.

    I had in mind that the EU Member States could now agree amongst themselves that i) an “EU patent” is not needed ii) within the EU, the final arbiter of the substantive validity of a European patent should be not some new court but, rather, an independent judicial appeal instance of the EPO. The world’s benchmark body of law on patent validity, the 40 years of accumulation of the established case law of the EPO would continue to deliver ever greater legal certainty. Whether or not any one patent lives or dies is not an issue of human rights for which guardians of the dignity of the human being have to die in a ditch. A patent is a time-limited monopoly, a restraint on free trade, an impediment to free competition. If the EPO revokes one patent too many, it’s not the end of the world. Infringement though is a bit different. There, one is talking about injunctions, which can bankrupt the employer and put the employees out of work. So let the CJEU think about that.

    On infringement, then, I had in mind that the CJEU would be the final arbiter. Compared with the complexity of deciding on validity (far too complex for the CJEU) decisions about what infringes are at kindergarten level and because every case has different facts the consequences of poorly reasoned decisions on infringement are less corrosive to legal certainty.

    Also, I haven’t worked out why Art 99 EPC would have to be amended. To me, it is not self-evident.

    1. Dear MaxDrei,
      you keep on saying that the BoA jurispridence is the world’s best. I guess not everyone is of this opinion. While the BoA decisions are in many areas quite good, IMO there are also areas where they are not. So at least where the EPC is ignored, this needs to be improved. Also, IMO, regarding obviousness, the PSA would have to be improved, too. At the moment it is often too restrictive (resulting in too many patents, but that probably was one of the goals…).

  6. @Attentive Observer
    It does a disservice to the EPO Boards of Appeal to view the creation of the UPC primarily in terms of competition to be the leading court and threat to the independence of the BOAs, thus pitting the BOAs against the future UPC. The UPC will be more than happy to draw on the impressive body of case law of the BOA. Owing to its broader competence encompassing infringement and related matters and the ability to take into account general interest issues , the UPC will bring significant insights which the BOAs will be happy to consider.
    Independence of the BOAs should not imply that they must be impervious to influences from judicial bodies whether national courts or the CJEU, on the contrary such influences are positive. For example the BOAs pay due attention to cases where European patents are struck down by a national court.

  7. Dear “epo (?) watcher”, or better UPC fan,

    The proponents of the UPC themselves have viewed “the creation of the UPC primarily in terms of competition to be the leading court”, and in their opinion the Boards of Appeal of the EPO should follow the case law of the UPC, e.g. Sir Robin Jacob in one of the Munich UPC conferences.

    In view of the above where do you take that the “UPC will be more than happy to draw on the impressive body of case law of the BOA”? How can you be sure that on the one hand, the UPC will have “the ability to take into account general interest issues (what do you actually mean?)” and on the other hand, “the UPC will bring significant insights which the BOAs will be happy to consider”? Please explain! Presently these are only empty words.

    I have been witnessing some mock trials according to the UPC, and I was struck by the heavy weight given to national traditions by judges appearing in such mock trials. You just need two judges of one nationality in a panel composed of three judges to tip the balance in favour of their national tradition. The technical judge in the panel was more or less ignored and the opinion of the third one was not really taken into account.

    It will take ages in order to arrive to a true international setting of the UPC, and the Court of Appeal will have an important role to play.

    I never claimed that “independence of the BOAs [implies] that they must be impervious to influences from judicial bodies whether national courts or the CJEU”. Numerous decisions of the BOAs and the EBA mention national case law. But it does not mean that they have to follow it. That those national decisions can be a source of inspiration is not at stake.

    When I speak of the independence of the BOAs, I refer to R 12c and 12d EPC. The mere fact that members of the BOAs have to show a certain “performance” (not even publicly known) in order to be re-appointed is enough to raise serious doubts about their independence.

    When one looks at G 3/19 and the contortions needed by the EBA with the “dynamic” interpretation of its own case law in order to arrive at a result which pleased the head of the EPO and the Administrative Council, those doubts are comforted.

    The same applies to the members of the UPC which also need to be reappointed.

    I would also like to put reasonable doubts for the necessity of a court like the UPC in view of the average number of validations of granted European patents in the participating member states of the UPC. Do at best 5 validations in the EU warrant setting up something as complicated as the UPC? I think not.

    Positive effects of the UP/UPC system have always been heralded, but I have never seen reliable figures. Merely a study of the EPO with 12, in words twelve, successful stories of SMEs and IP. A bit little to be convinced, when on the other hand they are reliable studies to prove the contrary.

  8. Dear Max Drei,

    As far Art 99 EPC is concerned, it would be useful not to limit the opposition period to nine months. After all the proprietor is allowed to limit its patent over the whole life span of its patent. Why should then the opposition period be limited to 9 months.

    As far as the utility of a UP is concerned see above. It is not in my humble opinion. The few proprietors validating in all member states of the EPC can afford multiple litigations if necessity arises. With the notion of exhaustion of rights European patent owners have been living quite peacefully and it is not the few litigations, e.g. pemetrexed, which can warrant setting up the UPC.

  9. Dear German examiner,

    I can agree with you point when you question “Why should the ECJ agree, that in this case a non-EU-court (with non EU-citizens as judges) is allowed to decide in these matters? And if it is restricted to an EU-court, what would the other member-states of the EPC say?”

    As explained before, this is the result of the separation between grant and exploitation of the patent decided by the founders of the EPC. By deciding after four unsuccessful attempts to set up a European Patent for the EU (European Community at the time) and the fear of being flooded by unexamined patents arriving via the PCT, the founders of the EPC did the best they could at the time in opening the European patent to non-EU member states.

    The PSA is not the problem. It is a tool, no more, no less, and in my opinion a quite useful one.

    The problem is the inordinate pressure exerted by the management on the examiners to deal with as much cases in the shortest time possible. Just have a look at the number of patents revoked or severely limited after an opposition, or declared null in national proceedings.

    Even if only 5% of European patents are subjected to an opposition, in two thirds of the cases the patent as granted comes out maimed. Even if oppositions are not evenly distributed in all fields of technique, a simple extrapolation shows that there is a lot to be done, contrary to the claims of the management that quality is steadily increasing. Very few oppositions are actually based on prior art the EPO could not have had knowledge when it granted a patent. This is a cause of concern.

    The UPC is no more than a revival of the dead borne Luxembourg convention of 1975 which had at least the advantage of establishing a Unitary Patent for the whole of the EU. The UPC does not even reach this goal.

  10. The problem with oppositions at the EPO is that they take a very long time and have only one round of writs, which is certainly not enough, so that everything is done during oral proceedings, where parties try (and usually achieve) to submit new evidence.
    The UPC revocation proceedings (see page 142 of the RoP) are much faster, better structured and also include two rounds of writs.
    Another issue with EPO oppositions is that the ODs (as well as the BoAs and the EBoA) are NOT independent from the EPO (the ODs are always biased in favor of the proprietor).
    Thus, the UPC is much better than the EPO, in terms of revocation proceedings.

    1. The most obvious (and simple) solution to the problems that you highlight would be revision of the EPC to make the Boards of Appeal truly independent of the first instance departments of the EPO. By making tweaks to their funding and Rules of Procedure, the Boards could also be transformed into a more typical “judicial” instance, capable of disposing of cases in much shorter order.

      The effort required to achieve these changes would be MUCH less (by orders of magnitude) than the effort already expended upon the UPC. It would also be less than the effort expended upon generation of the numerous iterations of far-fetched legal arguments that have been required to keep the current UPC alive ever since 2016. Further, if it enabled the Boards of Appeal to make preliminary references to the CJEU under Article 267 TFEU (for example, by way of a procedure involving a national court), amendment of the EPC would provide the added advantage of avoiding the constitutional bear traps that await the UPC.

      So why expend so much effort on the UPC? Is the level of disharmony within Europe on matters of infringement so problematic that the UPC is the only possible answer? Before adopting that solution, I would have thought that the first port of call really ought to be a proper attempt a harmonising national laws on patent infringement. A stand-alone international treaty (NOT involving the creation of a new court) ought to be perfectly capable of achieving that objective… though this would require more effort on the part of the Member States than was seen in many half-hearted attempts at bringing national laws into line with the UPCA.

      If national laws were fully harmonised, then mutual recognition of judgements would be so much more straightforward. No need for any new courts. Then again, creating a low cost, user-friendly, fully integrated, highly flexible, robust and fit-for-purpose litigation system in Europe was never really the key driving force behind the UPC, was it?

      1. Thanks to Concerned Observer for your comments. The boards of appeal need true independence and not merely an increase of the perception of their independence….

        The level of disharmony within Europe on matters of infringement is not problematic and in view of the limited number of validations in EPCA member states it is certainly not a problem which warrants the creation of the specialised court which decisions are, on top, only valid in part of the EU.

        The number of litigations extending over a plurality of member states of the EPC or of the UPCA is negligible. One recent example is the famous pemetrexed case, and for good or bad reasons, courts in the different contracting states came to similar conclusions. This shows that there is no necessity for the UPC beside the fact that large internationally active lawyers firms expect an increase in their revenues.

        All the UPC lobbyists managed to fool the politicians exactly like the proponents of free software managed to obtain from the European Parliament a decision against the patentability of software. In both cases, politicians have been induced to take decisions whose significance they did not understand and for which they did not spot the respective hidden agendas.

        Before any investment it is usual to carry out a cost/benefit analysis. Why has this not been done when the idea of the UPCA came to light? See above. When one considers the possible fee for a supranational litigation, the answer is blatant. But this is not in the interest of European industry and certainly not in that of European SMEs.

        Regular meetings of judges dealing with infringement in EPC member states would bring about harmonisation in matters of infringement at a fraction of the cost of the UPC. But some judges would then be deprived of the nice salaries they expect to get at the UPC.A German colleague repeatedly said to me that some national judges are totting up the salaries they lose due to the belated entry into force of the UPC…

  11. Dear Patent Robot,

    You are actually parroting what Sir Robin Jacob said in one of the Munich UPC conferences: opposition at the EPO is like waiting for Godot. I heard it myself, and I was not the only one.

    I would merely like to draw your attention that since July 2016 the opposition procedure has been streamlined and at least opposition divisions deal pretty quickly with oppositions. The bottleneck is at the boards of appeal, but this is not the fault of the boards but of the previous head of the EPO who wanted to put pressure on the boards by not allowing them to recruit.

    This has changed, but the backlog is still there and needs to be resorbed. This is also one of the reasons for adopting the RPBA2020.

    First question: why do you need two writs in opposition/revocation? Experience shows that the more writs are exchanged in opposition, the less clear the situation becomes. Normally the OD waits to see if the opponent replies to the writ in reply to the opposition. By summoning to OP as early as possible, the ping-pong between parties is killed in the nub. Furthermore, the strict application of Art 114(2) in first instance and in appeal through the RPBA helps to achieve a streamlined procedure.

    At least the EPO opposition system has the advantage to exist and to be cheap as far as the fees are concerned: 815 € at the EPO vs. 20 000 € basic fee at the UPC. At the EPO each party bears its own costs in opposition and a different apportionment is only decided for reasons of equity. At the EPO the costs for simultaneous interpretation are borne by the EPO and are not charged to the succumbing party as in the UPC.

    I strongly beg to disagree when you state that the ODs and the BAs are biased in favour of the proprietors. Revoking a patent in opposition is not something to be taken lightly as the proprietor loses everything, whereas the opponent can still act in nullity before a national court should its opposition not be successful. On the other hand since in 2/3 of the oppositions the patent comes out maimed, where do you see a bias in favour of the proprietor?

    An OD will take great care when revoking a patent. A patent cannot be revoked for flimsy reasons and simply to please opponents. If a granted patent has no raison d’être, then a patent has to be revoked, and this is certainly the case, but the opponent has to do its part of the job.

    As the UPC does not even exist, I find it quite daring to claim that “the UPC is much better than the EPO, in terms of revocation proceedings”. Or do I detect some form of wishful thinking?

    When you see for instance the way the German Federal Court (BGH) deals with added-matter in nullity proceedings, there you can say that there is a bias in favour of the patentee, not at the EPO. In general the BGH is only revoking a patent when it cannot do otherwise. This is a complaint I heard so often from German colleagues.

Comments are closed.