UPC-Updates | 30. January 2024

Comparison of opposition proceedings at the EPO andrevocation actions at the UPC – advantages and disadvantages

The detailed article is published at JUVE Patent.

Since the introduction of the Unified Patent Court (UPC) in June 2023, a new system for central attacking the validity of and thereby to nullify a European Patent has been introduced. If a European patent of concern is an EU Unitary Patent, or if a classically validated European patent was not opted out from the competence of the UPC, a central revocation action under the UPC now exists in parallel to an opposition before the European Patent Office (EPO). Therefore, the question arises: what are the pros and cons of challenging the validity either before the EPO or before the UPC? The present report provides some guidance and discusses the main advantages and disadvantages of each system – which eventually is a matter of strategic considerations whether and which advantage may prevail – be it costs, timing, speed of proceedings, and possibly other issues.

Author

Dr. Andreas Oser, LL.M

Andreas Oser has been working in the IP field since 1991, became a German and European patent attorney in 1995 and has been managing partner at Prüfer & Partner since 2002. In addition he holds an LL.M. degree in International Intellectual Property Laws (University of Hagen). Prior to working in the IP field, he studied chemistry at the University of Freiburg i. Brsg., and then completed his Ph.D. and postdoctorate scientific work at the Max Planck Institute for Biochemistry in Munich.

Date of Release

30. January 2024

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Comparison of opposition proceedings at the EPO andrevocation actions at the UPC – advantages and disadvantages

Since the introduction of the Unified Patent Court (UPC) in June 2023, a new system for central attacking the validity of and thereby to nullify a European Patent has been introduced. If a European patent of concern is an EU Unitary Patent, or if a classically validated European patent was not opted out from the competence of the UPC, a central revocation action under the UPC now exists in parallel to an opposition before the European Patent Office (EPO). Therefore, the question arises: what are the pros and cons of challenging the validity either before the EPO or before the UPC? The present report provides some guidance and discusses the main advantages and disadvantages of each system – which eventually is a matter of strategic considerations whether and which advantage may prevail – be it costs, timing, speed of proceedings, and possibly other issues.

To the article

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