Oddfellow 01/25
Two years on…
Bubendorf 2 July 2025
.. and the Unified Patent Court has well and truly established itself as a go-to venue for litigating European patents. Despite all the naysayers and doubters, it has taken off to a surprising degree – we all thought that it would be a slow start, that applicants would not commit themselves to an untried procedure until there was more experience and that opting-out would be the rule rather than the exception. The actual proportion of opt-outs stands at 43% and the proportion of unitary patents at 23%. An interesting analysis of UPC/unitary patent trends can be found here. Nearly 1000 cases have been filed at the UPC, over 900 first-instance orders have been issued and nearly 100 decisions on the merits given. A small number of decisions on the merits have been issued by the Court of Appeal.
The UPC has sought to be a relatively quick procedure, ideally within one year of bringing a case, and it has certainly achieved this. It has shown itself prepared to rule on validity even though there was a pending oral proceedings before the EPO, and in some cases has ruled the opposite of the EPO. As yet, there is no clear legal mechanism to resolve conflicting outcomes between opposition proceedings before the European Patent Office (EPO) and revocation actions before the UPC. Some national patent court systems, such as that of Germany, can stay infringement or revocation proceedings pending the outcome of an EPO opposition, but this is not the case at the UPC, which 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. However, as the basic law of the UPC is the EPC, there is interest in the two being reasonably consistent.
However, there have been some differences. As you all know, the EPO’s approach to inventiveness is the problem-solution approach. This is generally followed, but not to the letter of the EPO’s approach. In one case, Sanofi v. Amgen, the Munich Central Division held that:
The assessment of inventive step starts from a realistic starting point in the prior art. There can be several realistic starting points. It is not necessary to identify the “most promising” starting point.
contrary to the EPO Guidelines:
The closest prior art discloses, in one single reference, the combination of features which constitutes the most promising starting point for a development leading to the invention.
One of the most interesting aspects is the question of long-arm jurisdiction, i.e. can the UPC’s reach extend to infringement in EPC contracting states that are not part of the unitary patent scheme (e.g. UK, Switzerland, Spain)? The answer is apparently yes.
So, so far, overall a success story. Many issues remain undecided, but the degree of consistency is high.
A recent example of the coming-together of the EPO and the UPC was the Enlarged Board of Appeal case G1/24. This involved an opposition filed by the Chinese tobacco company Yunnan Tobacco International against Philip Morris on the subject of a heated aerosol-generating article for use with an electrically-operated aerosol-generating device, i.e. an electric cancer stick. The question was the extent to which the description and drawings should be used to interpret the claims. EPO Boards of Appeal case law had been going off in two different directions, with one lot of decisions taking a very strict “no influence whatsoever” approach and another lot taking a more lenient approach.
In this case, the granted claim read:
A heated aerosol-generating article (1000, 2000) for use with an electrically-operated aerosol-generating device (3010) comprising a heating element (3100), the aerosol-generating article comprising an aerosol-forming substrate (1020, 2020) radially encircled by a sheet of thermally-conductive material (1222, 2222), in which the aerosol-forming substrate comprises a gathered sheet of aerosol-forming material circumscribed by a wrapper, the wrapper being the sheet of thermally-conductive material which acts as a thermally-conducting flame barrier for spreading heat and mitigating against the risk of a user igniting the aerosol-forming substrate by applying a flame to the aerosol-generating article.
The problem was that wording “gathered sheet”. PM argued that the term should be given its normal art-recognised meaning, whereas Yunnan argued that, in the light of the description, the meaning was sufficiently broad to lack novelty. So, three questions were referred to the Enlarged Board of Appeal:
1: Is Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2: May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3: May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
The EBA found it unnecessary to answer question 3, said the answer to question 1 was no, and that the answer to question 2 was “always consult the description, and not just in the case of lack of clarity or unambiguity”. The desire not to diverge from national laws and the practice of the UPC was mentioned. The EBA’s order:
The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
All very well, but it gives no hint as to how this should be applied to the case in question. That’ll be up to the BoA in T439/22 to put this into practice.
It’s nice to see something in which you had a hand to come to fruition. When I came to Givaudan, I was interviewed by the Head of Fragrance Research at Dübendorf, the sadly late Dr. (later Prof. Dr.) György Frater. George (as he was universally known) and I bonded over a common love of good tea, and when he retired and would drop in to say hello, I made sure that a cup of the best was waiting for him. On retirement from Givaudan, he became involved in the area of metathesis catalysis, along with Nobel Chemistry Laureate Dr. Richard Schrock, with the founding of Ximo. George came originally from Hungary, a refugee from the Soviet crushing of the 1956 uprising (I wonder what he would have made of its present regime), and he was heavily involved in establishing a laboratory there. I was involved in some of the early patent work, which was very interesting.
Ever since the TTIPAB told me I was a Very Naughty Boy for not doing sufficient Trans-Tasman work for maintaining my registration, I’ve been working hard at it. Thankfully, because I’m merely a consultant at Givaudan with no meetings, no objectives to meet and no visiting remote Givaudan locations, I have the time to do this. The Board has done me a favour – there’s some interesting stuff in there. So, I’m ready for my next TTIPAB appraisal – I hope…
Too darn hot… my Northern Irish blood never adjusted to Australian summer temperatures, and I am horrified to find that they have followed me here. At least it’s not Spain, where they got to 46° in some places. Swizzieland may be cooler than that, but the higher temperatures are causing a reduction in the permafrost at high altitudes that help hold the rocks together. In a recent example, the village of Blatten in canton Valais was almost totally destroyed when much of the local glacier and its surroundings descended on it. The violence was such that it registered 3.1 on the Richter scale. Thankfully, geologists and glaciologists had warned that this could happen, so the entire village and its animals had been evacuated, and I believe that only one life was lost. But, as the planet warms, the mountains can expect more of this. In the current heatwave, the 0°C line is above 5000M, which is higher than Mont Blanc. The warden of the Hörnlihütte on the Matterhorn, where the walking stops and the climbing begins, says that, if the heatwave continues, there would be a greater danger of rock falls. Not what folk in the summer climbing season want to hear.