The UPC and EPO Divide: Understanding Conflicting Revocation Proceeding Outcomes

With nearly 800 cases adjudicated or pending thus far at the Unified Patent Court (UPC), a possible procedural gap has appeared in the European patent system: no clear legal mechanism currently exists to resolve conflicting outcomes between opposition proceedings before the European Patent Office (EPO) and revocation actions adjudicated by the UPC. Unlike certain national patent court systems, such as Germany, where courts can stay infringement or revocation proceedings pending the outcome of an EPO opposition, the UPC does not mandate this approach, but instead only provides for a stay if a final decision in an opposition is expected “rapidly”.  This creates the possibility of conflicting decisions on claim scope for the same patent. 

A comparison of two recent decisions helps demonstrate the complex interplay of UPC and EPO outcomes. 

A UPC decision issued February 28, 2025, by the Paris Central Division (PCD) involved a central revocation action in which Claimant NJOY Netherlands B.V. (Claimant) sought to invalidate EP3504989 (“the ‘989 patent”) owned by Defendant Juul Labs International Inc. [1] The Claimant requested revocation on the grounds of added matter, lack of novelty, and lack of inventive step. At the time the revocation action was filed in September 2023, the ‘989 patent was already subject to a parallel opposition proceeding before the EPO’s Opposition Division, which, in a first instance decision, maintained the patent in an amended form. Because the Opposition Division’s first instance decision was available sufficiently early in the UPC proceedings, the Defendant was able to present an auxiliary request corresponding to the claims as maintained by the EPO as part of its Statement of Defense and Application to Amend the patent in suit in the UPC action. Ultimately, the PCD ruled in a similar manner to the Opposition Division in finding the originally granted claims have an added matter problem, while accepting the same auxiliary request upon which the EPO maintained the ‘989 patent. While the EPO Boards of Appeal subsequently ruled against the proprietor in deciding to revoke the ‘989 patent on added matter grounds, at least in first instance decisions the ‘989 patent was maintained with identical scope by both EPO and the UPC.

However, the first instance PCD outcome on the ‘989 patent is not the only possible result of a UPC case and an EPO opposition relating to the same patent running in parallel.  In a second example, the PCD issued a decision on January 22, 2025 involving a central revocation action brought by Claimant NJOY Netherlands B.V. seeking to invalidate EP3613453 (the ‘453 patent) owned by Defendant VMR Products LLC [2], on the grounds of lack of inventive step. As with the ‘989 patent, the ‘453 patent was also subject to concurrent parallel opposition proceedings before the EPO’s Opposition Division.  The Opposition Division maintained the ‘453 patent in a first instance decision based on a narrowing amendment.  However, this opposition decision occurred later in the UPC proceedings, after the Defendant had filed its Statement of Defense and Application to Amend but shortly before the interim conference. The PCD panel noted the opposition outcome and during the interim conference invited the Defendant to submit a new auxiliary request to permit harmonizing of the UPC proceedings with the opposition outcome and both parties to comment on the admissibility of such a request.  The Claimant objected to the new auxiliary request as late filed, both in writing and during the trial in early December 2024.  Ultimately, the PCD chose to deny the Defendant’s additional application to amend the patent based on the new auxiliary request, finding that it could have been filed earlier in the UPC proceedings and also commenting that the request would not have cured what it perceived to be a lack of inventive step of claim 1 of the ‘453 patent in view of the prior art cited by the Claimant. Instead, the PCD decided to maintain the ‘453 patent on the basis of each of dependent claims 6, 7, and 8 individually in combination with claim 1, in effect creating three separate independent claims, which led to a different scope of the patent than what was maintained by the EPO Opposition Division. 

The EPO opposition decision is currently under appeal, and the PCD decision could also be appealed by both parties.  However, in the event that both first instance decisions are upheld, the ‘453 patent has the potential to become a somewhat confusing patent right. On the one hand, whatever form the claims take following conclusion of the EPO opposition appeal will clearly be effective in the non-UPC countries (e.g., the UK, Switzerland, Turkey, Spain, Ireland) in which the ‘453 patent was originally validated.  However, as the narrowing amendment approved in the first instance EPO opposition proceedings differs in scope from the claims resulting from the PCD’s first instance UPC decision – that is, the EPO-approved independent claim includes one added limitation while the UPC-approved independent claims each include one additional, different limitation – the enforceable scope of the ‘453 patent’s claims may differ in UPC countries.  No case law or rule yet exists to define the claim scope for UPC enforcement in a case such as this.  On the one hand, the original claim scope as granted further limited by both the EPO-added claim feature and the features of at least one of the dependent claims identified as valid by the UPC (i.e., the overlapping scope between the current result from the two proceedings) would likely be the narrowest interpretation of the enforceable claim scope for UPC purposes.  On the other hand, the UPC revocation brought by the Claimant alleged invalidity only on the issue of inventive step.  Assuming the narrowing amendments required by the EPO in the first instance opposition outcome are maintained by the EPO Boards of Appeal, one could question the applicability of the UPC decision since the scope of the ‘453 patent claims upheld by the EPO would then differ materially from the claims at dispute before the PCD. 

The PCD decision included a brief comment asserting that the late auxiliary request would not have changed the outcome even if the PCD had admitted it into the proceedings. However, the European approach to validity, in particular to for inventive step, focuses on a synergy between claim features and how any missing claim features relating to a single technical effect differ from the closest prior art or logical starting point for a person of ordinary skill in the relevant technical field.  While the PCD reasoned that the feature added by the EPO amendment was not relevant to the issue of inventiveness over the Claimant’s suggested closest prior art, it is certainly arguable whether inclusion of that feature would have changed the analysis of whether that prior art was actually an appropriate starting point. Furthermore, it seems generally questionable if the PCD can properly issue a finding regarding the effect of an additional claim feature which is not part of any auxiliary request, in particular when considering that it was the PCD itself that did not admit the respective request.

Because no UPC case law has yet been established on this issue of mismatched claim scope resulting from parallel UPC and EPO opposition proceedings, the ‘453 patent appears to present a case of first impression.  It will be interesting to see how the UPC Court of Appeal handles this issue.  As the UPC rules do not follow the German approach of having the option to stay the proceedings and thereby postpone judicial consideration of validity until the EPO opposition process is completed, the PCD outcome regarding the ‘453 patent is unlikely to be the last time this scenario plays out.  Patentees faced with a similar situation of handling concurrent EPO and UPC proceedings on validity must do their best within the constraints of needing to limit their auxiliary requests to the UPC courts to a “reasonable” number while also attempting to anticipate potentially unforeseen developments that might require subsequent submission of additional auxiliary requests, particularly in EPO opposition and opposition appeal proceedings. The possible coexistence of EPO opposition and UPC invalidation proceedings in the case of a recently granted patent (i.e., a patent for which an opposition can still be filed because it granted in the past nine months or one that is the subject of ongoing opposition or appeal proceedings) creates a high degree of uncertainty for patent proprietors and should be taken into account when considering enforcing a European patent before the UPC.

[1] Unified Patent Court Order

[2] Unified Patent Court Application Order

Subscribe To Viewpoints