The UPC – To be the First Among Equals?

In the interlocutory decision T?439/22 (or the Decision) for the Referral of G1/24, (reported here by the IP Kat) ?the Board of Appeal has referred to case law of the Unified Patent Court (UPC) in its reasons for deciding to refer questions to the Enlarged Board regarding claim interpretation (i.e. the application of Art 69 EPC and the Protocol on Interpretation of Art 69 EPC). I noted this as a likely possibility in a post of mid April.?

The way in which the UPC decisions are referred to suggest the Board of Appeal may be paying closer attention to the decisions of the Unified Patent Court (UPC) ?than National Courts. ??

Details of the Citation of UPC Decisions

In retrospect it might seem obviously inevitable the boards of appeal would refer to a UPC decision:? the UPC is intended ultimately replace the national patent litigation of its contracting member states, and the Enlarged Board does often refer to case law of member states referring decisions.? ?The Decision cites National case law of multiple member states at least twice: by reference to an earlier case (Reason 4.2 - T 367/20 ( Reasons 1.3.5)) and? ?by reference to the case law of France, England and Wales (for the UK),? Germany and the UPC, (Reasons 4.3 & 4.4) – see also Reasons 6.2 and 6.3.?

However,? the way in which the UPC case law was referred in the Decision does seem to have some differences when compared to references in Board of Appeal Decisions to the case law of National Courts:

?

1)?????? Referenced UPC Decision is more Recent than the Oral Proceedings for Decision:

Reason 4.4.4 of the Decision refers to a UPC Court of Appeal (CoA UPC) decision dated ‘13 May 2024’, “VusionGroup v Hanshow” (APL_ 8/2024, ORD_17447/2024) , which is more than a month after the oral proceedings, ‘10 April 2024’.? This is unlike all the decisions of National courts referred to in the Reasons.?? All other cited decisions of the National Courts preceded the date of the oral proceedings to which the decision referred (i.e. this Decision and the referenced decision at Reason 4.2,? T 367/20). Admittedly the reference in the Decision to the UPC decision of 13 May 2024 confirms the guidelines of an earlier CoA UPC decision, “Nanostring v 10x Genomics” (UPC_CoA_335/2023, App_576355/2023) of 26 February 2024, yet the Decision sets out how the ratio of the earlier CoA UPC decision of February was applied in the later CoA UPC decision.

2)?????? Could the Decision be due to the UPC Court of Appeal Decision of 26 February 2024?:?

A reason for the Decision appears to be a finding of the Board of Appeal that a referal to the Enlarged Board of Appeal is required to reach a common approach for claim construction for patentability.? This is because the boards in developing at least one line of the modern case law on claim construction (application of Art 69 EPC) e.g. T169/20 as noted in the Communication of the Board of Appeal of 5 December 2023 (December Communication) ?failed to recognise a deviation of the application of the European Patent Convention by referring to G2/88 in a narrow sense (i.e. for added matter post grant rather than also other grounds of patentability (Arts 54, 56 and 83 EPC) and in failing to consider ?G6/88.? (Reasons 3.2 to 3.2.3).

In the Decision, the Board of Appeal acknowledges that the CoA UPC as not only confirming the case law of the National Courts mentioned at Reason 4.3 but in specifically identifying the relevant, early case law of Boards of Appeal, G2/88 (Reason 4.34, especially last sentence).? It ?then restates this sentiment at Reason 6.1:

“The CoA UPC has taken the first step in this direction [of building on the developed case law of the boards of appeal rather than developing new standards or by looking at national law alone] by referring to the original case law developed by the Enlarged Board of Appeal of the European Patent Office in the days when the Enlarged Board had no doubt that Article 69 EPC and its protocol were applicable also when assessing patentability (see 3.2 and 4.3.4 above).”

Summary

The relationship of precedence of the decisions of national Courts and the board of appeal, has been one of ‘persuasive authority’ – the national courts and the boards of appeal of the EPO are as such not bound by the decisions of the other, but strongly influenced and carefully consider the decisions of the others.? It is natural to expect that the UPC would take the position of a National Court, i.e. that the National Courts, the UPC and the boards of appeal would be of persuasive authority to each other; so the relationship between the boards of appeal and the UPC would be like that of the boards of appeal and any other National Court.?

If that were the case,? why had the boards of appeal not acknowledged the well-established practice of the National courts in claim construction earlier. ?Substantially all of the referenced decisions of the National Courts (of France, England & Wales and Germany) referred to at Reason 4.3 pre-existed the leading decisions of modern case law of the boards of appeal on claim construction, as noted in the December Communication.? This could ?give the impression that the CoA UPC restated and applied? the existing well-established practice of the National Courts in the? “Nanostring” decision of 26 February 2024, rather than providing ‘confirmation’.? The only the extra step of the CoA UP was to refer to G2/88 as authority from case law of the boards of appeal.?

Yet, the nature of the references to decisions of the Board of Appeal in this Decision (by acknowledging the contribution of the CoA UPC in pointing to the need for the Referral and a possible answer for the Referral) suggests that the boards of appeal may seek to work more collaboratively and closer with the UPC than the National Courts.?

Could it be that the boards of appeal will tend to consider some decisions of some courts, e.g. the UPC – especially the Court of Appeal - ?more persuasive than others – the National Courts??? Could the boards of appeal treat the UPC more as a collaborative partner than the National Courts?? ?

The points made here may be based on observations circumstantial to this decision.? For the boards of appeal, perhaps some European Patents Courts could be more equal than others? ?A more pragmatic, forgiving view would be that it shows that at the present time, the members of this Board of Appeal are attentively following developments at the UPC, demonstrating their recognition, like many other in the patent community,? of the importance? of the UPC.??

This Decision and Referral to the Enlarged Board are the ?first official communications relating to the Enlarged Board of Appeal that refer to case law of the UPC; the development as to how the boards of appeal handle decisions of the UPC will no doubt continue to be something to monitor in later decisions of these proceedings and of other cases.