UPC-series: EPO Opposition and UPC Revocation side to side

When is time for litigation the patentee has a lot to take into account, but one of the most important things is to check the scope of protection provided by each available litigation system, including speed, costs of litigation and results.

The UPCA broadened the grounds of revocation by including the reason of lack of entitlement and of national prior rights (Article 65 UPCA), covering in that way the entire legal framework provided by the EPC. The UPCA also made the role of the experts more active, by providing the ability to the experts to cross-examine, while in the EPO opposition the opinion of the expert is provided in written form.

Considering timing, the procedure before the EPO takes more time than the revocation before the UPC. Basically, this is because the opposition needs to be filed within the period of nine months and wait for this opposition period to expire. On the contrary, a revocation action can be brought before the UPC at any time. Roughly, the whole procedure can take up to fifteen months before the EPO and fourteen months before the UPC. In this period of time the claimant should have an oral decision from the EPO at their hands or a written one from the UPC. The ability to revoke a patent at any time of its lifetime is the biggest advantage of the new UPC system.

Moving into costs, litigation before the UPC can be very costly. The fee for revocation and appeal of the order rises to 20.000 euros each. On the other hand, the opposition fee before the EPO is only 840 euros and the fee for the appeal of the decision is 2785 euros.

As a result, if the opposition is successful the patent is going to be revoked in all 38 states participating in the EPC. If the revocation action is successful, the patent will be revoked in 17 participating in the UPCA States.

So, which route should a claimant follow? Both procedures can run simultaneously and the ability to stay the proceedings before the UPC is also provided. However, once the nine-month window for opposing the patent has closed, the revocation action before the UPC is a more timewise and cost-effective choice, since otherwise the claimant would have to file an opposition to each state separately.

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