With the ratification of the Agreement on a Unified Patent Court (UPCA) and the subsequent start of work of the Unified Patent Court (UPC) on 1 June 2023, it has become possible to challenge the legal validity of a patent in the context of pending infringement proceedings in the form of a counterclaim for revocation. The counterclaim for revocation is therefore often used as a response to an infringement action (defence). If, as a result, the patent is successfully declared invalid, the legal basis of the infringement action is withdrawn.

In the course of the court’s first year of operation, i.e. in the period between 1 June 2023 and 31 May 2024, a total of 165 counterclaims for revocation were filed, whereby these were filed in the context of 63 infringement actions. The number of counterclaims for revocation filed appears high in comparison to the pending infringement actions because, until recently, each defendant in infringement proceedings was supposed to file a separate counterclaim for revocation.

Counterclaim for revocation as a defence and grounds for invalidity

The defendant in infringement proceedings may respond by filing a statement of defence within three months of service of the statement of claim (Rule 23 Rules of Procedure of the Unified Patent Court). If the defendant is of the opinion that the allegedly infringed patent is invalid, the statement of defence must contain a counterclaim for revocation of the patent against the proprietor of the patent (Rule 25 (1)). Since the court will decide on the validity of the patent on the basis of the counterclaim for revocation (Art. 65 para. 1 UPCA), it must contain one or more grounds for invalidity. The grounds for invalidity are exhaustively listed in Art. 138 of the European Patent Convention (EPC). Accordingly, a patent can only be declared invalid if its subject matter is not patentable, if it does not disclose the invention clearly and completely enough for a person skilled in the art to carry it out, if its subject matter goes beyond the content of the application or if its scope of protection has been impermissibly extended and if its proprietor is not authorised to do so (Art. 38 para. 1 EPC). Accordingly, the court may declare a patent invalid in whole or in part solely on the above grounds (Art. 65 para. 2 EPC).  In this case, the rights conferred by the granted patent are deemed not to have been granted from the outset. (Art. 65 (4) UPCA).

Jurisdiction of the Unified Patent Court (UPC)

According to Art. 32 UPCA, the court has jurisdiction for both infringement actions and actions for revocation or counterclaims for revocation of patents. As a result, the question of infringement and the legal validity of a patent at the UPC is dealt with by the same court.

With regard to the jurisdiction of the chambers of the Court of First Instance in the case of a counterclaim for revocation, the relevant local or regional chamber before which the infringement action is pending may, after hearing the parties, decide at its own discretion in favour of one of the following options: i) to hear both the infringement action and the counterclaim for revocation, ii) to refer the counterclaim for revocation to the central chamber and to stay or continue the infringement proceedings, iii) to refer the case to the central chamber with the consent of the parties (Art. 33(3)(a), (b), (c) UPCA).

A counterclaim for revocation may be filed in addition to an action for a declaration of invalidity already pending before the central division (Article 33(5) UPCA, Rule 75). In this case, the division designated by the central division to hear the action for a declaration of invalidity suspends all further proceedings on the action for a declaration of invalidity until a decision is taken by the division conducting the proceedings on the infringement action pursuant to Article 33(3) UPCA, unless the parties have agreed otherwise (Rule 75(3)).

In addition to the possibilities of an action for a declaration of invalidity and a counterclaim for revocation, the legal validity of a granted European patent can also be challenged by means of an even more cost-effective opposition procedure, but only within nine months of publication of the grant (Art. 99 EPC).

Author: Dr. Olga Michala

E-mail: michala@paustian.de