UPC v EPO: Divergence in claim amendment practice

On April 30, the Paris Central Division of the UPC issued a decision concerning the admissibility of amendments to the patent in suit in revocation actions, containing interesting commentary on the contrasting scope of the roles played by the UPC and the EPO.

In the ongoing revocation action brought by Bitzer Electronics against Carrier Corporation, an application to amend the patent proved contentious when Carrier applied to amend claims of the patent which were not targeted by the revocation action. Bitzer, whose revocation action requested revocation of the patent at issue “to the extent of claim 1”, objected that amendments concerning non-attacked claims must be considered inadmissible. Carrier argued that, as neither the Unified Patent Court Agreement nor the Rules of Procedure prescribe how the claims may be amended, it was reasonable to follow an interpretation in line with EPO practice.

The EPO’s practice is defined in Rule 80 of the Implementing Regulations, reciting “the description, claims, and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100, even if that ground has not been invoked by the opponent”. Hence, while proprietors are not entitled to amend their patents entirely at-will, they are not required to amend only those claims attacked by the Opponent.

Having considered this point, the Panel of the Paris Central Division (consisting of Judges Thomas, Catallozzi, and Keltsch) observed that an application to amend a patent during litigation serves as a defence against the invalidity claim, and so it followed that the patent may only be amended to the extent it is necessary to react to the invalidity claim. Otherwise, the scope of proceedings as set by the invalidity claim may be broadened. The Panel therefore decided that any amendments regarding claims not attacked by the invalidity challenge must be considered inadmissible.

In justifying their departure from the practice of the EPO, the Panel considered that “the Unified Patent Court is a judicial body and, as such, is bound by the scope of the dispute and cannot address claims for which it has no jurisdiction”, whereas the EPO “is an administrative body whose duty is to assess if an invention is worthy of patent protection and not to resolve disputes between parties in an adversarial system”.

This is of course only a first instance decision. Nevertheless, should this be an early indication of the UPC’s approach to amending claims, it is not only narrower than the EPO’s but also dramatically restrictive as compared to the approach taken in national patent litigation. For example, the UK patent office and courts allow patentees to apply to amend without such restrictions. It will be interesting to see if there is an appeal to the decision and if so the approach that the UPC Court of Appeal will take. Restrictions like this on the ability of the patentee to strengthen a patent by amendment may worry potential UPC litigants. 

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