At a CIPA webinar on the Unitary Patent on 15 March 2013, a comment from a member of the panel took us rather by surprise: a suggestion was made that there is no provision in the UPC Agreement for post-grant amendment.

This IPCopy writer promptly dove for her well-worn copies of the Regulation and the Agreement, streams of obscure patent doomsday situations running through her head, and words of disbelief cascading in the direction of her unfortunate office-mates (such are the hazards of an open plan)*. Could this be true?

Well, yes and no, it seems…

A few corners of the Regulation and the Agreement quickly shed some light on the conundrum:

Regulation – Article 3(2)

A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States. It may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States.

So, clearly, limitation of a unitary patent is envisaged. But who actually has the competence to amend it?

Article 32 sets out the competence of the UPC as follows:

Agreement – Article 32

Competence of the Court

(1) The Court shall have exclusive competence in respect of:

(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;

(b) actions for declarations of non-infringement of patents and supplementary protection certificates;

(c) actions for provisional and protective measures and injunctions;

(d) actions for revocation of patents and for declaration of invalidity of supplementary protection certificates;

(e) counterclaims for revocation of patents and for declaration of invalidity of supplementary protection certificates;

(f) actions for damages or compensation derived from the provisional protection conferred by a published European patent application;

(g) actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention;

(h) actions for compensation for licences on the basis of Article 8 of Regulation (EU) No 1257/2012; and

(i) actions concerning decisions of the European Patent Office in carrying out the tasks referred to in Article 9 of Regulation (EU) No 1257/2012.

(2) The national courts of the Contracting Member States shall remain competent for actions relating to patents and supplementary protection certificates which do not come within the exclusive competence of the Court. 

As you’ll note, there’s no mention of limitation of a unitary or non-unitary patent, or of applications for amendment anywhere in this Article.

Article 65 of the Agreement does come to the rescue, at least in part:

Agreement – Article 65

(1) The Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation.

(2) The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC.

(3) Without prejudice to Article 138(3) of the EPC, if the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part.

So, in the course of revocation proceedings, the patent can be partially revoked, such that it is maintained with amended claims. There is, at least, explicit provision to ensure that revocation isn’t an all-or-nothing process (phew). However, it’s not clear from this article to what extent the Court will be able or willing to amend the claims. Limitation is linked to a situation where the patent is revoked only in part. Will amendment be limited to something corresponding to Auxiliary requests at the EPO? Will it be possible to bring in subject matter from the specification, or does this only allow a patentee to drop back to existing dependent claims?

And what about post-grant amendment as a separate action? Article 32 UPC makes no mention of an action for amendment of a patent, and the Agreement contains no equivalent to Section 27 of the UK Patents Act (excuse the UK-biased analogy), and no mention at all of amendment other than in the context of revocation proceedings.

One (overly?) literal reading of Article and the Regulation might go as follows:

• There is no mention in Article 32(1) of the UPC having exclusive competence in respect of actions for amendment of a patent;
• It is explicit from Article 32(2) that the national courts will remain competent for any actions that do not come within the exclusive competence of the UPC;
• Therefore the national courts will ‘remain competent’ for amendment proceedings;
• According to Article 3(2) of the Regulation, any limitation must be in respect of all contracting states, so limitation by one national court would need to have effect in all contracting states. This in itself seems implausible, and additionally:
• National courts were never competent to decide amendment in respect of other states, and therefore cannot remain competent to do so, as specified by Article 32(2).

Something of a paradox then.

Since this leaves us in a bit of a tangle, let’s assume that the national courts will not have competence in respect of post-grant amendment of a unitary patent**. What options are left?

No doubt many IPCopy readers will already be waiving a copy of Visser at their computer screens, thumbing their way to Article 105a with a solution in their sights***. Central Limitation is, of course, an answer to this. The argument might well go that there is no need for separate amendment proceedings at the UPC, because Article 105a EPC covers post-grant amendment perfectly well, thank you very much.

And so it does****. But here’s the catch: Central Limitation must have effect in all EPC states, not merely in Unitary Patent countries. So, if Central Limitation is indeed the answer, in amending your unitary patent, you will be forced to amend any patents resulting from validation in non-unitary patent countries in exactly the same way.

This is clearly an undesirable situation. A proprietor looking, for example, to strengthen a unitary patent by post-grant amendment before bringing infringement proceedings will have no option but to amend any European patents validated in Spain, Italy, Poland, Switzerland and so on in the same way as the unitary patent.

This seems to be a rather unfair consequence. One might argue by way of defence that if a proprietor needs to amend a unitary patent to account for prior art, it is no great injustice to amend patents in other European countries in the same way to account for the same prior art. After all, had the prior art been discovered pre-grant, the European application would have been amended to account for it at a pre-grant stage, and that amendment would have had effect in all EPC states.

IPCopy notes, however, that a sizeable fly in this ointment is national pre-filed post-published prior art [in the UK, Section 2(3)-type prior art].

It seems likely that such “2(3)-type” prior art will be citable for novelty purposes against unitary patents, and that, since the claims of a unitary patent must be identical in all unitary-patent countries, national 2(3)-type prior art in a unitary-patent country will render the unitary patent invalid in all states, to the extent that the subject matter is disclosed in that prior art.

If 2(3)-type prior art arises pre-grant, the proprietor will at least be forewarned, and will be able to opt out of the unitary patent, and amend to account for the prior art only in the relevant country.

BUT, if the 2(3)-type prior art arises post-grant, and central limitation is indeed the only option for amending around the national 2(3)-type prior art, in the absence of revocation proceedings, the only option to amend around any such prior art will be to request Central Limitation. Thus, any national 2(3)-type prior art discovered post-grant will force limitation of all European patents, unitary or otherwise.

A further issue is that Central Limitation is ex parte, meaning that a potential infringer will be able to do no more than submit third party observations to the EPO.

Can you see a possible route for post-grant amendment other than Central Limitation? IPCopy will pre-empt an alternative solution to the above: one (overly?) generous interpretation is that the UPC Agreement does not explicitly exclude the possibility of post-grant amendment proceedings, and that post-grant amendment proceedings could therefore be written into the Rules of Procedure.

All comments welcome!

Emily Weal     15 April 2013

*She may have over-reacted.

**The Regulation wouldn’t apply for non-unitary patents, so for a validated EP it may be the intention that the national courts will, in fact, remain competent for actions to amend patents (for example, the UKIPO might remain competent for actions to amend EP(UK) patents).

***No? Just me then.

****Although central limitation was brought in with the EPC 2000, Article 105a-c applies to all patents granted, or applications pending, at the time of the entry into force of the EPC 2000, and all applications filed on or after the entry into force of the EPC 2000. Thanks to PLA in the Comments section below for clarity on this point!