The EPO has recently announced it will ‘accelerate its processing of parallel opposition proceedings if it is informed by the Unified Patent Court or a national court or competent authority of a contracting state that an infringement or revocation action relating to a European patent or a Unitary Patent has been instituted before it.’ It has been described as an effort to streamline patent cases within Europe, but it will not change much in practice, according to Sir Robin Jacob, former patent judge, one of the architects of the UPC, director of the Institute of Brand and Innovation Law of University College London and, last month, chairman of the UCL seminar ‘EPO and UPC: Friends or Foes?’
In a zoom interview with Kluwer IP Law, Sir Robin points out that in practice the EPO can’t speed things up. ‘The European Patent Convention sets some time limits which are extendable, but not reducible. If you look at the overall time a European Patent Office opposition procedure takes, including an appeal you are looking at something of the order of four years. That is despite the fact they don’t have much sending back now. They’ve controlled that well. It took a lot of time to get rid of ping-pong and their times are coming down – but we’re still looking at the order of four years. It may be less, it may be three, but neither are a anywhere short enough for a court to wait.”
The messy system of (inter)national courts and boards making conflicting decisions isn’t something of the past, according to Sir Robin: ‘The UPC has jurisdiction over the patent on the day of grant. So anybody who thinks they might be affected by this patent and wants an answer can go the court then. They can’t get a complete answer because it is possible the patent will be upheld in one or more non-UPC countries. You’ve got the United Kingdom, Switzerland, Spain, Norway, Turkey. So you’ve got a bunch, though even between them they are nowhere near economically as significant as the UPC territories.’
“I think if people get knocked out in the UPC, for the most they’ll give up”
And no patent case is fought all over the world, he says. ‘Parties fight in some countries, and then they settle or one side gives up. So suppose the UPC knocks the patent out. Will the parties proceed with carrying on in the EPO? Will the EPO be likely to disagree with the Patent Court? Very unlikely. It’s not like European countries now, with different evidence going in different jurisdictions. So I think if people get knocked out in the UPC, for the most they’ll give up.’
It could be a good strategic reason for parties not to choose the EPO opposition procedure, but go for a revocation action at the UPC instead, according to Sir Robin. ‘An EPO opposition is much cheaper, but much less certain and very slow, even though it’s been speeded up. The UPC would be much more expensive, but that’s warranted and it is still peanuts if it is a big patent case. And it’s not quite so easy to say that it is much more expensive. If you’ve got a strong case to knock down the patent, it may be you’ve got more pressure on the defending patentee, because they have to pay their own costs ánd those of the other side. It’s a ‘loser pays’ system.’
And if the patent is upheld in the UPC?
‘Then there’s the interesting question what happens if the EPO knocks it out or cuts down the scope. That’s a difficult question in any legal system. It’s true now. A patent can be upheld in one action and then fail in another action by another party, even in the same country. There has been a case in England where the patent was upheld and the court ordered damages. Before these were paid, the patent was revoked in other proceedings and the Supreme Court ruled no damages were payable. It might have been different if they had actually been paid.
I have known some cases where the EPO narrowed the patent down compared with the national court. My last case as a barrister was in 1993. It concerned a patent on testing for hepatitis C. The UK patent office granted the patent. The patentees sued on the day of grant, had a trial within one year and the appeal within the next year. Three years later, the EPO cut the scope of the claims down. So those things happen and are going to happen always. It’s not a new problem at all.
National courts will be inclined to listen to what UPC says. But there may be cases where it hasn’t said anything – for example there might be a different piece of prior art that wasn’t considered. It might have been an obscure piece of prior art which wasn’t brought into the UPC proceedings, but a very good piece of prior art.’
“I call patent offices a coarse filter, like a net with big holes. So quite a lot gets through the net. And that’s inherent in every patent office, not just the EPO”
Sir Robin Jacob is not impressed with complaints about the quality of EPO patents, like they have been voiced among others by the Industry Patent Quality Charter.
‘I call patent offices a coarse filter, like a net with big holes. So quite a lot gets through the net. And that’s inherent in every patent office, not just the EPO. And the reason it’s inherent is obvious. There’s only one person involved, the patentee. Patent office examiners are under quite a lot of pressure, timewise, and all they can do is take a broad view. The opposition division, of course, looks at it much more closely once it goes into opposition.
It’s not like a land dispute, where it’s very clear what the conflict is about. The patent system is a probabilistic thing. Patents are valid or not valid depending on obviousness. That’s a rather woolly expression, even though the EPO mistakenly tries to produce rules about it, or about ‘sufficiency of description’. You can talk about these amorphous terms until you’re blue in the face.’
For the topic of patent quality, Sir Robin refers to ‘Raising the Bar: A mistaken Chimera?, a chapter he wrote in 2010 in Concurrence Santé Publique, Innovation et Médicament. A quote: ‘So what is to be done about bad patents? The answer is not to worry about most of them. Most patents do not matter commercially so “raising the bar” for all patents, besides being impossible, would be a largely wasted exercise if it could be done. (…) The system should concentrate on the relatively few patents which do matter. Which these are is for the market to decide. What is needed is a better system to enable a party potentially affected by a particular bad patent to get rid of it. (…) What is needed is the creation of a European patent court staffed by judges who understand the system and particularly who recognise that a patent granted by the Office is no more than a patent which has passed the coarse filter of the Patent Office. There should be no strong presumption of validity. The court must be able to work fast, and particularly to respond with speed to applications for revocation when that matters commercially.’
It would take another 13 years before the UPC finally saw the light of day, including the speedy procedures and expert judges Sir Robin favoured. ‘This is a very good system, I think. I hope. I was there when it was designed. The only thing I’m a bit worried about that it’s going to be too strictly front-loaded. It’s very expensive to get the case right from the outset. And it’s maybe a bit too hard on defendants because they don’t have very long time for filing their statement of defence and other documents. The court ought, in appropriate cases, to give them more time. Not too much at one go, because all lawyers do things at the last minute. So it’s a question of when you fix the last minute.’
If you look at what’s going on at the UPC this first period, are there things you’re concerned about?
‘I’m hearing one or two first instance decisions haven’t been very satisfactory. I think fundamentally the biggest problem though, is the IT system, which is really inflexible. It’s a very severe problem, the trouble is it was overdesigned. It’s trying to imagine the litigation system as a series of steps. You have to fill up a form for the first step and then the next one and the next one. And it sets the times and so on. It’s not how real litigation systems work, they’re much more flexible. All sorts of things happen. I’m told that originally you could only have one plaintiff. And that if you’re filling up a document and you want to go back and review it you can’t. That’s ridiculous. The judges are deeply unhappy, is what I’m hearing, it’s driving them crazy.
“I’m told that originally you could only have one plaintiff. And that if you’re filling up a document and you want to go back and review it you can’t. That’s ridiculous. The judges are deeply unhappy, is what I’m hearing, it’s driving them crazy”
When I was involved in the UPC’s creation, I wasn’t concerned about this. I said: just go out and see what IT court systems are being used in California, New York, Australia and do a deal with one of them. You’d have to do an upgrade of such system for the UPC, but that wouldn’t be too much of an issue. Why have they tried to reinvent the wheel?’
You were closely involved in the creation of the court and now, due to the Brexit, you’re on the sideline. What’s that like?
‘Very sad. Very sad. I’m still keeping contact with all my friends on the court, and I support it. I think one day UK may rejoin. I understand that technically speaking it is possible for the UK just to re-sign. No negotiations are needed. We can just do it.’
But how? The UK is not an EU member anymore.
‘You don’t have to be an EU member. You have to accept the jurisdiction of the European Court of Justice in case where a point of European law arises. But there aren’t many points of EU law in patent cases. Sometimes there are competition law defences, and there are points on the Enforcement Directive, which was basically copied from English law, so there’s nothing in it which is difficult as far as the Brits are concerned. The Directive took all the best bits of English procedural law.’
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I would not compare EPO Opposition with UPC proceedings, as said in the article, certainty and expertise level are very different, I would rather see EPO examination as a first raw screening possibly refined with the help of an opponent, and then the UPC as the real assessment of the important and slipped-through cases, so a parallely anticipated Opposition decision is not useful at all unless is much before the UPC decision and allows parties to react in time to it, having it at the same time or just before the UPC proceedings is useless, I hope EPO render these „overlapping“ cases as fast as (almost) in real time
Outstanding insights by Sir Robin. However, I do not understand how the UK could join the UPC by simply signing the UPC Agreement again and accepting limited jurisdiction of the CJEU in cases before the UPC (a choice which would make sense to me). As I recall, the CJEU gave its Opinion in No. 1/09 holding that a draft agreement on the creation of a European and Community Patent Court was not compatible with European Union law, inter alia, because it would include non-EU member states….
Dear Mr Pegram,
It is more than likely that the UK cannot join the UPC again by simply signing the UPC Agreement again and accepting limited jurisdiction of the CJEU in cases before the UPC. If this was at all possible, Switzerland and Norway, and even Turkey, could also join the UPC. That is certainly the wish of the supporters of the UPC, but it is and will remain pure fiction.
Next to what has been said in the famous Opinion C 1/09, an important question would have to be answered: how can a non-EU member state be made liable for damages caused by infringements of Union law, cf. Art 22 UPCA?
It is thus more than surprising to hear such ideas from an honourable law professional like Sir Robin Jacob.
I am also unsure where Sir Robin gets the information to form his view that the UK can simply re-sign the UPC Agreement. However, I am not sure that Opinion 1/09 (on its own) necessarily prevents it. On the other hand, Opinion 1/09 and other CJEU case law have the potential to pose major problems for the UPC even without the UK as a member, if anybody ever formally asks the CJEU to look at the UPC Agreement.
Opinion 1/09 is unhelpfully unclear in a number of respects. For a more detailed discussion I recommend the article by Prof. Ansgar Ohly in JIPLP, March 2017, vol. 12, issue 3 pp.245-258, and especially section 2.1 of that article.
Prof. Ohly’s article makes a persuasive case that the CJEU’s opinion does not (or at least does not clearly) rule out a third country from *ever* participating in a court common to EU member states. Rather, all of the concerns voiced in Opinion 1/09 related to the question of whether the proposed European and Community Patents Court (“PC”) sufficiently safeguarded the supremacy and autonomy of EU law. A major concern was that the then-proposed PC usurped the role of national courts and deprived them of their power to request preliminary rulings from the CJEU.
In fact, Opinion 1/09 explicitly recognised that agreements which also include third countries are permissible as long as they do not affect the powers of the courts and tribunals of EU member states in relation to the interpretation and application of EU law, or their power or obligation to request preliminary rulings from the CJEU – see paragraphs [75]-[77] of Opinion 1/09.
A more fundamental question in my view is therefore whether the UPC in its current format actually meets the criteria laid down in Opinion 1/09 *at all* even without the UK as a member. The problem recognised in Opinion 1/09, that the old “PC” replaced the role of national courts with respect to patent disputes, has not gone away.
In fact the problem becomes deeper and more puzzling if you look at the criteria set out by the CJEU in the Achmea case (C-284/16), where the Court held that the Netherlands/Czechoslovak arbitral tribunal was not “a court common to a number of Member States” because it did not have “links with the judicial systems of the Member States”. The tribunal therefore had to be distinguished from the Benelux Court of Justice, which was a “court common to a number of Member States” because “the procedure before it is a step in the proceedings before the national courts” (see also Parfums Christian Dior, C-337/95). A similar conclusion was reached in respect of the Complaints Board of the European Schools in the Paul Miles case (C-196/09).
Before we start trying to work out whether – and if so how – it might be legally possible for the UK to rejoin without also rejoining the EU, a more fundamental question needs to be addressed. Does the UPC actually meet the criteria of being a court “common to the member states” as required by the CJEU? I am not sure that it does, given the fact that unlike the Benelux court, the UPC does not form a step along the pathway of national litigation. If the UPC is not, in fact, a court “common to the member states” then there is no legal basis in the European treaties for the UPC to ask the CJEU for preliminary rulings on the interpretation of EU law, and the whole edifice begins to crumble.
Article 1 UPCA and the amendments to the Brussels I Regulation try to get around this by stating that the UPCA is (or “shall be”) a court common to the Member States on the same footing as the Benelux court. Does this act of legislative sleight-of-hand really wash away the conditions that the CJEU has repeatedly stated in its case law and in Opinion 1/09?
A danger here is that if the UK were to try to rejoin – however unlikely that seems – the definition of “court common to the member states” would inevitably come under very close scrutiny. And I am not sure that the creators of the UPC Agreement would like the answer the CJEU might give even in the situation where membership stays limited to EU members.
But how? The UK is not an EU member anymore: ‘You don’t have to be an EU member.”
It seems that Sir Robin Jacob has not read art. 1 of the UPC Agreement, how odd.
I have quite a different view than the two preceding commenters and of Sir Robin Jacob.
I had the pleasure to follow on line the UCL seminar “EPO and UPC: Friends or Foes?” I have commented on the event in another blog.
It is well known that Sir Robin Jacob has been a staunch supporter of the EPC from day 1. It has not changed since. He has always claimed that the UPC will be the leading court in Europe and all courts will follow its case law.
During the UCL event, he repeated what he had said years ago at a seminar on the UPC on the premises of the EPO: opposition at the EPO is like waiting for Godot.
That the procedure at the EPO takes longer is due to some time limits/periods which cannot be reduced as they are set in the EPC and/or its implementing regulations. This fact was made clear to Sir Robin Jacob by the Chair of the Legal Board of Appeal at the EPO.
Sir Robin Jacob wanted to hear from the Chair of the Legal Board of Appeal at the EPO that the EPO will follow the case law of the UPC. He never got the answer he wished to hear. The best he earned was “it depends”. When Sir Robin Jacob thinks that the EPO will very unlikely disagree with the Patent Court, strong doubts are permitted. Unless there is a strong political pressure on the EBA, I cannot see it, for instance, giving up its strong stance on novelty/added matter.
As far as opposition proceedings, and contrary to what Sir Robin Jacob claims, a partner at Carpmaels and Ransford LLP, member of the panel, was of the opinion that a drop in the number of oppositions at the EPO is not to be expected. The comparison of the costs 900€ at the EPO vs. 20 000€ at the UPC speaks in favour of oppositions.
He added that for instance, generic manufacturers are not displeased that oppositions at the EPO can take a few years. If they managed to kill the patent it is all the best for them. Looking at decisions of the boards, one notices invariably that in the pharmaceutical field opponents are often generic manufacturers.
It could thus be a good strategic reason for parties to choose the EPO opposition procedure, and not go for a revocation action at the UPC instead.
When Sir Robin Jacobs consider that “it is still peanuts if it is a big patent case”, he highlights one of major drawbacks of the UPC: the cost of the procedure. The procedure before the UPC is only good for parties having very deep pockets.
Will a SME, for which the UPC was allegedly set up, being attacked for infringement before the UPC, have the financial resources to file a counterclaim for revocation, and bear the costs if it loses? Will it file on its volition a claim for nullity? Reasonable doubts are permitted as not only the idea of a litigation insurance for SMEs has been dropped very quickly, but at the same time the ceilings to recoverable costs are not a real remedy for SMEs. If attacked, it will rather give up and pay for a license, even unjustified. I can however agree that should people get knocked out in the UPC, for the most they’ll give up
During the UCL event, one major problem was discussed: diverging decisions on validity at the UPC and by the EPO. That different decisions on validity should be avoided at any cost was also brought forward by the Lady President of the UPC Court of First Instance. She was of the opinion that the UPC has been set up for quick decisions, but not at the price of diverging decisions.
The work of patent offices might be belittled by calling them a coarse filter, like a net with big holes. This is the case in purely declarative granting systems, but it is certainly not the case when a patent office is examining the substance. The technical competence of examining offices might be ignored by lawyers and judges, but it has the merit to exist. After all, patents are technical items clad in a legal framework. It is however not wise to ignore one or the other. What is needed is mutual understanding and not erecting lawyers and judges as the only people having the necessary wisdom to judge upon the validity of a patent. That’s why the TBA of the EPO always comprise two TMs and only one LM.
One should also not forget that examiners at the EPO are not bound by decisions of national courts or of the UPC, but by decisions of the EBA and decisions of the boards which have been taken over in the Guidelines. At least in first instance, it cannot be expected that the EPO will follow the case law of the UPC, as it does not follow any national case law.
Sir Robin Jacob might not be “impressed with complaints about the quality of EPO patents, like they have been voiced among others by the Industry Patent Quality Charter”. They do nevertheless exist and cannot be swept under the carpet. If one would follow the line of reasoning that quality of examination does not really matter as the racket has to big holes, and divergences should only be settled in court, all examining offices should stop working and all patents should be granted automatically. Those who are disturbed by a patent could then go to court to decide on the validity. This is however a societal decision which is not of the competence of judges and lawyers. And they should not go to a court which procedure is very expensive. Probably less expensive as UK litigation, but still not within the reach of any party.
I just would like to remind here that the French legislator went from a purely registration system (from 1844 till 1968), and has presently also introduced examination and opposition procedures at the French patent office. I doubt that it was for the pleasure of adding one more racket with big holes in the net.
but why do you feel so threatened by the UPC? They judge infringements and revocations which used to be the competence of national courts, not of patent offices, is it because very few national courts had the necessary expertise whilst the UPC may be much more competent? Is this a threat for the practices in the patent offices? Every one will carry on his own task and then companies, states, experts, law-makers, etc. will naturally steer a common direction to go, big divergences will be not accepted by the real game makers, no chance. And dont tell tales that the EPO is cheap and SME friendly, it is almost as expensive as the UPC counting representative‘s costs, search/examination fees, extension fees, Translations, publication fees, national validations and so on, and at the end it delivers outcomes which are almost a lottery … we should welcome the UPC, it will give certainty and consistence which is the real sense of all this, at least to the really disputed cases