Has a European patent been granted to someone else and are you inconvenienced by this? With the advent of the Unified Patent Court (UPC), there is an additional option to have the patent declared invalid in multiple countries: a lawsuit at the UPC.
This additional option is in addition to an opposition procedure at the European Patent Office (EPO) to revoke a patent in several countries at the same time.
The differences in these procedures can determine the choice of how to attack a patent. The main differences are:
Deadline ➤ An opposition to the EPO is possible up to 9 months after the grant of the patent. In the event of a lawsuit through the UPC, there is no end date.
Costs ➤ If you go to the EPO to oppose, this will cost 880 euros in agency costs. This is in stark contrast to the cost of a lawsuit at the UPC. For this, the costs to be paid to the court are 20,000 euros.
Territory ➤ A European patent can be valid in almost 40 countries, including outside the EU, so a successful opposition will completely annul the patent and in all countries where it is valid. If you attack a patent via the UPC, the outcome will only determine the EU countries that are members of UPC (maximum 18 countries). From a geographical point of view, the effect of an opposition via the EPO is therefore greater than the conduct of annulment proceedings via the UPC.
Turnaround time ➤ The EPO takes about two years to make a decision on a filed opposition. At the UPC, there seems to be a court ruling sooner so far, namely after about a year. This has everything to do with the fact that the deadlines for the EPA are longer, while the deadlines for the UPC are very tight.
It is precisely these tight deadlines that ensure that as a patent attorney I work with a team in UPC cases, while in the case of EPO oppositions it is not uncommon for these to be conducted by 1 patent attorney per party.
Proceedings before the EPO and UPC may be conducted on the same grounds for invalidity. One of the grounds for revocation of a European patent is unauthorised added matter.
Based on the first noises, the UPC seems to be less strict than the EPO. As a result, we can very cautiously say that the opposition procedure at the EPO seems more promising if an important ground for attack relates to unlawful added matter.
In any invalidity procedure, it is important to carefully weigh all grounds and interests and to make a choice for one or the other procedure on that basis.
For more information, please feel free to get in touch with us on info@aipex.eu
Credit: European Patent Attorney George Seezink from AIPEX member firm AOMB
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