A guide to the UPC and the UP - Flipbook - Page 465
or revoke its patent. Art.79 UPCA merely makes it clear that the parties themselves cannot
usurp the power of the EPO or Court in this regard.
22-29 It is important to note the impact on the status of the patent on, firstly, a decision by the Court
or EPO to limit or revoke a patent; such a decision is deemed to apply at all times i.e. the patent
is invalid or limited ab initio. 42 By contrast, when a patent is limited or revoked at the request of
the patent proprietor to the EPO, the limitation or revocation will apply as at the date of the
decision. 43 Therefore, in this situation, the patent proprietor is in theory able to assert the
patent in its original form for past infringement up until the date of the limitation or revocation
decision. This would obviously not be possible where a patent is revoked or limited ab initio.
Although the wording of art.79 UPCA and r.11(2) RoP may appear to suggest that parties are
unable to agree by way of settlement that a patent be limited or revoked ab initio, it is unlikely
that such a restriction exists where the terms of a settlement agreement is confirmed by way
of a decision of the Court, as it is the Court’s decision that actually revokes or limits the patent,
rather than the settlement agreement itself.
22-30 In addition to whether a patent can be limited or revoked by agreement, there has also been
significant discussion as to whether the opposite will be possible, allowing the parties to settle
their dispute by agreeing to set aside a decision at first instance revoking a patent.
Unsurprisingly, many cases settle following a decision at first instance. Where the decision at
first instance is that a patent is revoked, the patentee will almost certainly wish to have this
decision set aside as part of any settlement. In many civil law jurisdictions, practitioners will
be aware of the practice where, if a dispute is settled in this way, the appeal court will “rubber
stamp” the settlement and dismiss with prejudice a first instance decision revoking a patent,
without any further assessment of validity of the patent.
22-31 As an action before the Court can be withdrawn at any time if there has been no final
decision, 44 there has been some discussion of whether this practice of “rubber stamping”
the reversal of a first instance revocation decision may be possible in settlements of disputes
before the Court. However, given that the preparatory committee have stated that:
“the parties to a settlement cannot reinstate a patent revoked in the first instance. That is selfunderstanding and does not need a rule”, 45
it seems that such “rubber stamping” will not be acceptable. In any event, given that all
decisions of the Court will be public, it is likely there would be little benefit in such “rubber
stamping”, as any patent that is restored in this way would be tainted by the publicly available
first instance decision on validity with no decision of the Court of Appeal overturning it on the
merits. The patentee in such circumstances will likely wish to be able to appeal the first instance
revocation decision without any opposition from the defendant. This is something that can be
provided for in the settlement agreement.
22-32 It is important to note that EU competition law discourages the inclusion in a patent licence
of a clause that prohibits the licensee challenging the validity of the licensed patent. In certain
licensing situations it may therefore be advisable to include a clause that terminates the licence
if the validity of the patent is challenged, rather than containing an express restriction on
challenging validity. The European Commission however considers that “[i]n the context of a
settlement agreement, non-challenge clauses are generally considered to fall outside Article
101(1) [TFEU]” because “[i]t is inherent in such agreements that the parties agree not to
challenge ex post the intellectual property rights which were the centre of the dispute.
Indeed, the very purpose of the agreement is to settle existing disputes and/or to avoid
42
43
44
45
art.65(4) UPCA and art.68 EPC in relation to opposition, limitation or revocation proceedings.
art.105b(3) EPC.
r.265(1) RoP.
See “Responses to the Public Consultation on the [15th draft] Rules of Procedure of the UPC: Digest of Comments Received”
6 March 2014, p.25.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 455
