The EPO’s seminal Enlarged Board of Appeal decison, G1/24, brings far reaching and significant leanings for contentious EPO patent proceedings. But it doesn’t stop there – it’s a decison that sets the scene for what we expect to see from both the EPO and UPC going forward.
The UPC is rapidly becoming central to global enforcement strategies, enhanced by its expansive long-arm jurisdiction. Parallel proceedings at the UPC and EPO are a clear gold standard approach. G1/24 makes explicit reference to a strong motivation to harmonize with UPC practice. This EPO case confirms that the approach to claim interpretation it now sets in stone is deliberately chosen for harmonisation with that already used at the UPC
Indeed, G1/24 cites UPC Case NanoString v 10X Genomics, which ruled that the description and the drawings must always be used as explanatory aids, and not only to resolve any ambiguities. The EPO in the decison even included pertinent justification for their change of approach, referring - to ‘harmonizing practice at European level’.
What Practice points can we draw from this alignment with the UPC?
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It gives confidence to businesses in their contentious IP strategies - they can now formulate these with both EPO and UPC in mind.
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This harmonisation likely to fuel a continued rise in use of parallel proceedings- EPO and UPC.
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And for those not yet involved in the UPC - G1/24 gives a hefty weight to reasons for now considering the UPC in your IP strategy.
In summary, G1/24 clearly confirms a shift in EPO practice to have a consistent approach to contextual claim interpretation - driven by what we have seen at the UPC. We will very likely see more harmonization between these two powerhouses of patent enforcement as the UPC moves into its third year.
For any questions about UPC practice, please contact Caelia Bryn-Jacobsen or your usual Kilburn & Strode advisor.