UPC Weekly - Should we stay or should we go on?

2024 Week 22

This week we report on the UPC revocation action in Bitzer v. Carrier and the related EPO opposition.  The UPC Court of Appeal decided against a stay of the UPC proceedings, allowing the UPC revocation action at first instance to be completed within about a year.  The EPO opposition proceedings are also continuing at pace, although not quite fast enough to merit a stay of the UPC proceedings according to the UPC Court of Appeal.

The UPC Rules of Procedure (RoP) give the court wide discretion to order a stay of proceedings in various circumstances. The first example listed in the RoP for this is where there are parallel EPO opposition proceedings against the same patent. However, the RoP make it clear that the mere existence of an EPO opposition is not enough – the UPC may only order a stay where a decision in the EPO opposition proceedings is “expected to be given rapidly”.

In Bitzer v. Carrier, the UPC Court of Appeal has given this topic a good hard look and it is clear from their decision that they want to reinforce the basic intended benefits of the UPC – providing high quality and fast decisions in European patent litigation.

The case also provides a particularly simple and clear comparison between ongoing UPC revocation proceedings and EPO opposition proceedings, since these were launched at the same time and have identical parties and the same substantive arguments. See the timeline below for how they measure up against each other.

EPO Opposition

Carrier is the proprietor of European patent EP3414708B1. On 28 June 2023, Bitzer filed an EPO opposition against the patent, this being the very last day of the 9 month EPO opposition period after the date of grant of the patent. 

The granted patent has 15 claims. Independent claim 1 defines an apparatus for cold chain monitoring of perishable goods, such as food or pharmaceuticals.  Independent claim 9 defines a method for cold chain monitoring of perishable goods, having essentially the same limiting features as claim 1, but in method form. In effect, the invention is defined in terms of the operation of an environmental sensor, an event detector and a controller. The technology is not complex and the patent is brief.

The EPO opposition is based on all realistic available grounds (lack of patentability in view of the prior art, lack of sufficiency of disclosure and added subject matter). However, the main attacks rely only on prior art.

Carrier initially responded to the EPO opposition by requesting acceleration of the opposition and filing a new main request (with 39 claims in total) and nine auxiliary requests. However, in response to a preliminary opinion from the EPO, Carrier changed their main request to a set of 15 claims, including simple amendments to the independent claims and consequential amendments to the dependent claims.

UPC Revocation

The day after filing the EPO opposition, on 29 June 2023, Bitzer filed a revocation action at the UPC Central Division, although the actual start of proceedings at the UPC seems to have been delayed by some procedural issues. In the UPC revocation action, Carrier responded by filing a new main request which is substantially the same as the revised main request filed in the EPO opposition proceedings (as mentioned above, originally the EPO opposition proceedings had a different main request). 

Bitzer objected to the amendments at the UPC on the grounds that they had only attacked claim 1. The UPC Central Division agreed, and ordered that any amendments to the claims other than to claim 1 were inadmissible. At first sight, this seems a little odd – the amendments to claims 2 and 3 seem to be necessary in view of the amendments to claim 1. Without these amendments, the claim set will be messy in a way that the EPO would not usually allow.  It is not yet known whether Carrier will appeal this point – it is not addressed by the recent decision of the Court of Appeal.

So, on the substance of the case, at least for claim 1 of the main requests, the UPC revocation proceedings and the EPO opposition proceedings appear to be identical. However, despite this, the UPC Court of Appeal decided that a stay should not be granted. 

In summary

You will notice that the UPC revocation action hearing is scheduled for slightly less than one year from the start of UPC proceedings.  This is exactly as envisaged when the UPC was set up, and to be fair is fast by European judicial standards and certainly faster than most EPO proceedings. The UPC Court of Appeal considered that staying the UPC proceedings was not warranted because the EPO oral proceedings are scheduled for 4 months later, and this could not reasonably be considered to be suitably “rapid” in context. Although the EPO had accelerated the EPO opposition proceedings, this in itself did not change the UPC Court of Appeal view.

The UPC Court of Appeal were also not particularly worried by the risk of conflicting decisions from the UPC and the EPO on the same facts.  They observe that if either the UPC or the EPO revoke the patent, in whatever sequence, then the patent is revoked (at least in the UPC states). However, they did not address the question of what happens if the UPC allows an amended version of the patent in one form and the EPO allows an amended version of the patent in a different form. Then, presumably, the timing of the decisions from the UPC and the EPO will matter.

This decision from the UPC Court of Appeal is not surprising given various preceding cases from the courts of first instance of the UPC on this topic. The fact that the UPC revocation action hearing had already been scheduled and the EPO opposition division oral proceedings are scheduled for several months later led to the UPC Court of Appeal considering that there would be no benefit in delaying the UPC proceedings.

For completeness, it is useful to look at the progress of the EPO proceedings and the UPC proceedings on the same timeline. This really demonstrates the speed of both proceedings and in particular the time pressure that is on the patent proprietor in UPC revocation proceedings.