2024 Week 31
What happens when you have the same parties fighting over revocation of the same patent, with the same prior art and the same amendments, at the UPC and at the EPO at the same time?
Two months ago, we reported here on the interim stage of the UPC revocation action Bitzer v. Carrier. The UPC Court of Appeal had decided against a stay of the UPC revocation proceedings in view of the ongoing related EPO opposition. The UPC case therefore continued, and the UPC Paris Central Division (CD) have now issued their decision on Bitzer’s revocation action against Carrier’s patent EP3414708B1.
The result at the UPC is that the patent has been maintained in amended form. In the meantime, the EPO is gearing up for its accelerated opposition division oral proceedings in October, having issued its preliminary opinion in that opposition case. There’s lots to learn from these cases, so we take a look at the highlights.
Can you amend claims that have not been attacked at the UPC?
The UPC decision is a bit murky on this point. Bitzer’s UPC revocation action attacked claim 1 only. Carrier filed a Main Request, amending the claims as granted, and 12 Auxiliary Requests (ARs). These claim requests amended claim 1 in view of the attacks made to claim 1, but also made consequential amendments to the dependent claims. Bitzer objected to these amendments to the dependent claims.
The UPC CD did admit the claim amendments but only to the extent that claim 1 was amended. On the face of it, this leads to the odd situation that claim 1 is amended and the (non-amended) dependent claims may not be consistent with amended claim 1. This is clearly a more restrictive approach than allowed (or rather, required) in EPO opposition.
However, positively for patentees, the UPC CD did confirm that it is possible to amend claim 1 using the features of a non-attacked dependent claim.
Should you late-file arguments at the UPC?
This is definitely not recommended.
The CD emphasised that UPC proceedings are heavily front-loaded, and did not admit any amendments, grounds or arguments that should have been raised earlier. In particular, even though specific prior art was on file from the beginning of the proceedings and used in an inventive step argument, the UPC CD decided that to raise it later in relation to novelty was inadmissible. Also, even though new sufficiency arguments were filed directly in response to the filing of the Main Request, these arguments were not admitted because the relevant feature was present in the granted claims, and so the UPC CD considered that they should have been raised in the initial revocation arguments in relation to the granted claims.
This is stricter than EPO opposition division procedure. Although new grounds of opposition cannot be raised as of right after filing an opposition, the EPO opposition division have the discretion to admit arguments later in the proceedings.
Anything to learn about claim interpretation at the UPC?
A nice simple point here. The UPC CD confirmed that, at the UPC, “Apparatus for” will be interpreted as “Apparatus suitable for”. This is the same as at the EPO. It is relevant in particular for validity because it is then not necessary for the prior art explicitly to disclose the intended use of the apparatus, but merely to be suitable for that use in order to be an anticipation.
The UPC CD also confirmed that the UPC considers “at least one” to include a disclosure of “a plurality”. The logic is that this is merely a deletion of “exactly one” from “one or more than one”. This is the same as the approach of the EPO and indeed by the EPO opposition division in the related opposition.
Are there differences between how the EPO and UPC are assessing the grounds for invalidity?
Yes, and this is where the real story lies.
The Main Request in both the UPC revocation action and the EPO opposition are the same. However, the EPO opposition division’s preliminary opinion is different to the UPC CD’s decision on a number of points. Of course, the EPO opposition division’s preliminary opinion is explicitly non-binding on the opposition division, so it could well change following the EPO hearing on 24 October 2024, and we wonder whether it will change in the light of the UPC decision.
Firstly, the EPO’s preliminary opinion currently differs from the UPC’s decision on added subject matter of claim 1 of the MR. Claim 1 of the MR requires “the apparatus is adapted to adjust the sampling rate depending on…”, whereas the application as filed discloses “the sampling rate adjusts depending on…”. The UPC’s decision is that the skilled person would understand that the apparatus is implicitly adapted to adjust the sampling rate, such that claim 1 of the MR does not add subject-matter. In contrast, the EPO’s preliminary opinion is that the language in the application as filed (“the sampling rate adjusts”) means that the sampling rate adjusts something unspecified or is able to adjust itself, which does not make technical sense. The application as filed also discloses specific embodiments of components that can adjust the sampling rate (such as a controller, sensor, remote controller etc.). However, claim 1 of the Main Request also covers the possibility that the sampling rate is adjusted by a different component of the apparatus, which in the EPO’s view is not directly and unambiguously derivable. The EPO therefore currently considers claim 1 of the MR to add subject-matter. This is a much stricter analysis than in the UPC’s decision.
The EPO preliminary opinion is in agreement with the UPC’s decision that claim 1 of the Main Request is sufficiently disclosed, but lacks novelty over document MB2 from the UPC proceedings (D2 in the EPO opposition).
The UPC CD considered AR1 in the UPC proceedings to lack novelty. Interestingly, this AR was not filed in the EPO opposition – perhaps this is because it did not strictly converge with the Main Request.
Turning to AR2 of the UPC proceedings (which is equivalent to AR1 of the EPO opposition proceedings), the EPO’s preliminary opinion is different to that of the decision of the UPC CD. The UPC decided that claim 1 of AR2 is novel over MB2 and MB4, and inventive over MB5 and MB6. They did not admit the inventive step arguments in relation to MB4, because these were late filed. The UPC therefore maintained the patent as amended in AR2.
However, the EPO’s preliminary opinion is that claim 1 of this AR lacks novelty over MB4 (D4 in the EPO proceedings). This is in direct contrast to the UPC’s decision.
Another point to note is how the UPC are assessing inventive step. The UPC refer to the skilled person and mention a “problem” and a “solution” but clearly do not carry out the EPO’s problem and solution approach. Instead, the CD state that “it is necessary to determine whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations”. It is not clear if this test would have the same outcome as the EPO’s problem and solution assessment in this case, but is certainly structurally different and builds on the impression from other cases that the UPC intends to develop its own approach to inventive step.
Will we see a change in approach in the EPO opposition?
These cases are poised at an interesting moment. The UPC have maintained the patent as amended in AR2, at first instance. The EPO’s preliminary opinion is that these same claims are invalid for lacking novelty over D4. But the EPO’s preliminary opinion was issued before the UPC decision came out.
The EPO opposition hearing is scheduled for 24 October 2024.
As we have seen in other cases such as DexCom vs. Abbott, the UPC is not shy of disagreeing with the EPO opposition division, even on the same prior art and arguments. However, now we have the same question in reverse – the EPO opposition division has seen the UPC decision on the same prior art and same claim amendments. Will they be feeling the pressure to change their mind in view of the UPC decision? We will see.
We may also see what happens, procedurally, with overlapping claim amendments. The UPC has allowed AR2 in those proceedings, in which claim 1 is amended for the European patent in respect of the UPC states. However, it is entirely possible that the EPO will allow a different set of amended claims, for all EPC states. Which will take precedence in the UPC states? This is all going to need to be sorted out in due course, in this case or another.
Lucy is a Patent Attorney at Mewburn Ellis. She works primarily in the computer software, electrical engineering, transport, and mechanical engineering sectors. She is involved with all stages of the patent process, particularly in the drafting and prosecuting of applications in the UK and at the EPO. She also has experience in oppositions and opinion work.
Email: lucy.coe@mewburn.com
