From EPO to UPC: Shifts and Trends in European Patent Litigation

In 2023, the Unified Patent Court (UPC) was officially launched, marking a new era in European patent litigation. The UPC aims to simplify the process of handling patent disputes through a unified litigation framework. However, in practice, this new system faces many challenges and uncertainties. A particularly important question that has drawn significant attention from patent litigation lawyers is whether the UPC will adhere to the existing case law of the European Patent Office (EPO).

1. Does the UPC Adopt EPO Case Law?

A significant question following the establishment of the UPC is whether it would rely on existing EPO case law when handling issues of patent validity and interpretation. Based on the discussion results from the first UPC User Forum held on October 5, 2023, which included 14 judges, the UPC seems more inclined to develop its own case law rather than directly adopting the existing EPO case law. However, in practice, when dealing with cases, UPC judges do refer to EPO precedents while adopting a more flexible and independent approach. This "yes and no" stance is reflected in several key legal areas:

• Claim Interpretation: In the CoA (335/2023) case, the UPC Court of Appeal interpreted claims based on the principles of Article 69 of the European Patent Convention (EPC) and its Protocol on Interpretation. Although the UPC may sometimes refer to EPO precedents, the details of specific interpretations may differ. Notably, the question of claim interpretation in EPO’s T 439/22 case was referred to the Enlarged Board of Appeal, indicating that there is some divergence within the EPO itself regarding claim interpretation. The UPC’s cases, such as LDD (463/2023) and LDM (292/2023), also show inconsistencies in claim interpretation.

  
  

• Priority: In cases involving priority (such as CDM 1/2023 and CDP CFI_255/2023), UPC rulings have cited some important EPO precedents, such as the G2/98 decision. According to this decision, priority can only be validly claimed when the subject matter of the subsequent application is clearly and unambiguously disclosed in the earlier application.

  
  

• Novelty: For the assessment of novelty, as seen in cases like LDM (2/2023), the UPC tends to adopt standards similar to those of the EPO but does not directly cite EPO case law. For example, in the LDP (230/2023) case, the UPC concluded that an invention must be clearly and unambiguously disclosed in a single piece of prior art.

  
  

• Added Matter: In the judgment on added matter, the UPC demonstrates its independence. In the LDH (CFI_131/2024) case, although the court allowed both parties to cite EPO case law to support their arguments, it did not explicitly state that it would base its decision on those precedents.

  
  

• Sufficiency of Disclosure: Regarding sufficiency of disclosure, the UPC's position shows limited reference to EPO case law. In the LDM (CFI 2/2023) case, the UPC did not directly cite EPO case law but established a standard that "a successful sufficiency of disclosure defense requires substantiated, verifiable facts to raise reasonable doubt." Additionally, in the CDP (CFI_263/203) case, Article 83 EPC was directly cited, but the test criteria were not further specified.

  
  

• Inventive Step: In assessing inventive step, the UPC also reflects a certain degree of independence. In the CoA (335/2023) case, while the UPC’s assessment is somewhat similar to the EPO’s "problem-solution approach," it does not strictly adhere to this method and instead demonstrates a more flexible attitude. For example, the UPC may not require a clear identification of distinguishing features and the objective technical problem, which differs from the strict approach taken by the EPO. Similarly, in the LDM (CFI_201/2024) case, the UPC discussed Agrevo obviousness, sufficiency of disclosure, and the G2/21 decision.

In handling patent disputes, the UPC refers to some EPO case law while also showing a trend towards establishing its own independent legal framework in certain situations. This approach allows for flexibility in future cases but also requires lawyers and companies to closely monitor these changes to formulate effective strategies in patent litigation.

2. Language Selection Issues in the UPC

The multilingual litigation environment of the UPC presents unique challenges for court procedures. According to Article 49 of the Unified Patent Court Agreement (UPCA), parties may request to use the language in which the patent was granted as the language of the proceedings. The court, when approving such a request, will consider various factors, such as the common language in the technical field, the language of the evidence, the nationality of the parties, and the size of the company.

In practice, the UPC handles language selection differently in various cases. For example:

• Case 1: CoA (101/2024, ApL_12116/2024): When reviewing requests for language selection, the court takes a balanced approach to the interests of all parties. Common considerations include the common language in the technical field, the language of the evidence, the nationality or place of establishment of the parties, and whether changing the language would lead to delays in the proceedings. In many cases, the court seems to favor protecting the defendant's right to choose the language. For example, if the outcome of balancing the interests is equal, the position of the defendant will be the decisive factor.

  
  

• Case 2: Ona v. Apple (LDD CFI_99/2024, App_26610/2024): In this case, Apple requested a change of language, but the court denied the request, partly because Ona was a small and medium-sized enterprise, and Apple had an in-house German litigator handling patent disputes and a parallel proceeding in Germany.

The UPC's practical approach to language selection shows its desire to balance fairness and efficiency. Lawyers participating in UPC cases should be well-prepared for this factor and use it flexibly to benefit their clients' litigation strategies.

3. Other Practical Considerations

In the practice of the UPC, there are other important practical issues that are crucial for the smooth conduct of patent litigation:

• Extension of Time Limits: The UPC adopts a very strict policy on time management and generally allows extensions of time limits only in exceptional circumstances. For example, according to Preamble 9, the UPC aims to complete all hearings within one year. This strict time limit requires lawyers to be highly vigilant in case preparation to ensure that all necessary litigation documents and procedures are completed within the prescribed timeframe.

  
  

• Handling Non-EU Defendants: In cases involving non-EU defendants, the UPC faces some challenges in service of process. The court generally requires attempting service by any method provided for by the Hague Convention before authorizing other methods of service. In such cases, it is advisable for litigants to prioritize defendants who can provide effective remedies in relevant EU territories.

  
  

• Impact of “Local Color”: The legal practice of the UPC is also influenced by the local legal traditions of the member states. In specific cases, UPC judges may adjust their approach based on the substantive and procedural laws of the region where they are located. This requires litigation lawyers to have good regional knowledge and experience.

  
  

The UPC's practice shows its strict management of litigation processes and respect for local legal traditions. In future practice, the UPC may continue to seek a balance between a unified legal system and respect for the legal characteristics of each region.