A briefing note by trademark specialists FRKelly has said that the validity of a European patent can be attacked by filing an opposition with the European Patent Office (EPO) within nine months of its date of grant.

This may result in revocation or limitation of the European patent across member states. If the deadline for filing has expired, then revocation of a European patent must be sought at a national level in each relevant country, the briefing note explains.

Separately, the incoming Unitary Patent Court (UPC) system will allow the validity of European patents to be challenged in central revocation proceedings brought before the UPC, which may be initiated any time after grant of the patent.

Central revocation will be available not only for European Patents that are granted as Unitary Patents, but also for non-unitary European Patents that are not opted out of the UPC.

Revocation of unitary patents will not be possible at a national level.

For both unitary and non-unitary patents, EPO opposition will still be available within nine months of the date of grant.

The EPO’s opposition procedure will remain unchanged, and decisions of the EPO’s opposition division will also apply to unitary patents, FRKelly IP specialist lawyer Alan Wallace (small picture) oints out.

No change to appeal procedure

Similarly, there is no change to the EPO’s appeal procedure and EPO appeal decisions will apply to both unitary and non-unitary European patents. 

The UPC provides a separate procedure for appealing against UPC decisions.

An advantage of the UPC central revocation is that it can be filed at any time post-grant as opposed to the nine-month window for filing an opposition.

However, the outcome of the central revocation action will apply only to the 17 UPC countries, which means that national revocation action may additionally be required if the patent is in force in non-UPC countries.

Nevertheless, central revocation will be more cost-effective than national revocation in all countries, the IP lawyer points out.

UPC central revocation is expected to be quicker than opposition, can also be based entitlement and national prior rights, and also allows for a capped recovery of legal costs, which is not normally possible for oppositions.

Cheaper oppositions

However, EPO oppositions should be significantly cheaper than UPC central revocation actions, and opposition decisions apply in all 38 EPC member states.

The procedure is also tried and tested, and therefore relatively predictable, Wallace believes. 

Both EPO opposition and UPC central revocation may be used against the same patent.

A party which applies for central revocation of a patent may find it cost-effective to make a dual attack by also filing an opposition.

But it may be more prudent to file an opposition and to subsequently consider seeking central revocation if the outcome of the opposition is unsatisfactory, the briefing note points out.

The decision on how to challenge validity will vary from case to case though EPO opposition is expected to remain a popular choice, because of its relatively low cost and its applicability across all EPC member states.