A guide to the UPC and the UP - Flipbook - Page 124
Figure 7-3: Relevant Provisions of the EPC for Unitary Patents
EPC
Formal Requirement
Implementing
Regulations tothe EPC
Grant
Substantive
Requirements
Unitary patent
arts 52 to 57 EPC
art.138(1) EPC
Validity
art.139(2) EPC
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Although principally concerned with the grant and validity of a European patent, the EPC
contains additional important provisions, in particular art.69 EPC regarding the construction of
a patent claim. Art.69 is interpreted according to a Protocol on its Interpretation, 73 intended as
a compromise between a too literal, strict reading of patent claims on the one hand, and a too
broad reading of patent claims based on the drawings and description on the other. The first
version of that Protocol dates from 1973. It was revised in 2000 with an additional article about
infringement by equivalence. The UPCA does not itself contain guidelines to be used by the
Court to construe a patent claim but, by including the EPC as a source of law, it is clear that
art.69 EPC and the Protocol on the Interpretation of art.69 EPC will have to be applied by the
Court when it construes a claim, especially for the purposes of determining infringement.
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Neither the Opposition Divisions nor the TBA at the EPO are obliged by virtue of the EPC to
take the law established by decisions of the Court, or for that matter the courts of any of the
contracting states of the EPC, 74 into account, and indeed on occasion the TBA has expressly
noted but declined to follow the decisions of national courts. 75 However, the TBA has
stated that it regards judgments of the CJEU as “persuasive”, and acknowledged the need for
uniformity in harmonized European patent law, so it remains to be seen what view the TBA
will take of judgments of the Court, and in particular its appellate judgments. The delicate
relationship between the EPO and other judicial bodies within the EU was summarised in the
TBA’s decision T 2221/10 of 4 February 2014 and in which such views were expressed:
“38. The EPO as an international organization with its separate legal order is not a member of
the EU. According to Article 23(3) EPC, in their decisions, the members of the Boards of Appeal
shall not be bound by any instructions and shall comply only with the provisions of the EPC.
In point (7) of the reasons for its decision G 2/06 the Enlarged Board of Appeal concluded that
neither it nor any Board of Appeal of the EPO, has the power to bind itself to follow a ruling of
the ECJ 76 on the interpretation of Article 6(2)(c) of the Directive and apply this to Rule 28(c) EPC.
73
74
75
76
See https://new.epo.org/en/legal/epc/2020/protinta69.html [Accessed 13 April 2023].
As of the date of writing there are 39 contracting states: Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czechia,
Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy,
Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Former Yugoslav Republic of Macedonia, Malta, Montenegro,
Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino and Turkey.
See for example T-1020/03 Method of administration of IGF-I/GENENTECH INC.
European Court of Justice, the previous name of the CJEU.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 114
