What happens when outcomes at the UPC conflict parallel EPO proceedings? Could the scenario be leveraged as a strategic tool?
With the UPC well into its second year now, question around the complex issue of divergence between EPO and UPC decisions are starting to emerge. With no formal mechanism currently in place to handle conflicting outcomes (such as the EPO revoking a patent whilst the UPC finds it valid and infringed), the suggestion that many scenarios may ultimately become national enforcement issues gives a new perspective to strategy considerations.
The UPC's commitment to scheduling hearings within 12-months makes stays of proceedings unlikely, allowing for parallel divergent decisions. For patent proprietors, this may mean delaying UPC infringement actions until after the opposition period expires. On the other hand, the EPC’s increased territorial coverage means EPO oppositions remain a powerful tool for alleged infringers alongside parallel counterclaims for revocation at the UPC.
Navigating this new landscape will clearly require careful strategy – but the potential for use as a new strategic tool for businesses is real. If you are considering parallel actions at the EPO and UPC, or have them pending, seeking strategy advice has never been more important.
For any questions about UPC practice, please contact Alexander Crew, or your usual Kilburn & Strode advisor.