Key decisions at the EPO and UPC - March edition

Part 1 - Understanding Admissibility of Appeal Submissions

General Principles

In the realm of European patent law, the Rules of Procedure of the Boards of Appeal (RPBA) play a pivotal role in shaping the appeal process before the Technical Board of Appeal (TBA).

One of the critical aspects of these rules is Article 12(4) RPBA, which governs the admissibility of submissions in appeal proceedings. According to Article 12(4) RPBA:

(4) Any part of a party's appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board.

The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings. In the case of an amendment to a patent application or patent, the party shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised.

The Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.

Article 12(4) RPBA should ensure that the appeal process remains fair, efficient, and consistent by setting clear guidelines on what can be considered during an appeal. The rationale behind this requirement is to prevent parties from introducing new issues at the appeal stage, which could disrupt the procedural economy and fairness of the process.

In Part 1 of this newsletter article, we review two recently issued decisions of the TBA - T 1178/23 and T 0823/23 to illustrate how the TBA assess admissibility under Article 12(4) RPBA, focusing on the criteria and considerations involved in determining whether the request was admissibly raised in the proceedings leading to the decision under appeal.

T 1178/23

This case involves an appeal by Nikon SLM Solutions AG against a decision to maintain European Patent No. 3007881, owned by Renishaw Plc, in an amended form. The patent pertains to an additive manufacturing apparatus and method.

The Board of Appeal had to decide on the admittance of Renishaw's Main Request, which was initially filed as the first Auxiliary Request during oral proceedings and deemed allowable by the Opposition Division. Nikon contended that this request should not be admitted due to its late filing and incorrect prima facie relevance assessment. However, the Board maintained that since the request formed the basis of the decision under appeal, it was inherently part of the appeal proceedings. The Board concluded that the Opposition Division had appropriately exercised its discretion, and Nikon's request to exclude the Main Request was refused.

The Board also had to decide on various Auxiliary Requests filed by Renishaw in reply to Nikon's statement of grounds of appeal. Regarding Renishaw's Auxiliary Requests 1 to 3, the Board noted these were new amendments introduced in response to Nikon's appeal, addressing novelty and inventive step objections previously discussed in the first-instance proceedings. The Board highlighted that Renishaw had the opportunity to file these during the opposition proceedings but failed to do so. Consequently, the Board decided not to admit these Auxiliary Requests into the appeal proceedings, as Renishaw did not sufficiently justify their inclusion under Article 12(6) RPBA.

For Auxiliary Request 4, the Board observed that its claims mirrored those of the first Auxiliary Request filed within the Rule 116 EPC deadline, which became the second Auxiliary Request when a new first Auxiliary Request was submitted during oral proceedings. Since the Opposition Division found the new first Auxiliary Request allowable, the second Auxiliary Request was not considered in the decision. By reintroducing it on appeal, Renishaw effectively resubmitted an unexamined claim. The Board assessed its admissibility based on whether it would have been accepted in the first-instance proceedings. The Board concluded that the request was admissibly raised, as it was filed within the deadline set under Rule 116 EPC and maintained during the proceedings. The Board also noted that the Opposition Division would have considered the March 2023 version of the Guidelines for Examination at the EPO, which states that amendments submitted before the date set under Rule 116(1) EPC cannot, as a rule, be considered late-filed.

T 0823/23

Case T0823/23 involves an appeal by ThyssenKrupp Rasselstein GmbH against the decision regarding the maintenance of European Patent No. 2098309, owned by JFE Steel Corporation, in amended form. The patent concerns a method for temper rolling steel strips.

Initially, the Opposition Division decided to revoke the patent, but this decision was overturned in a previous appeal (T 1950/16), leading to a remittance for further prosecution based on Auxiliary Requests. The Board of Appeal was tasked with addressing the admissibility of an objection under Article 100(b)/83 EPC, which was not initially raised in the notice of opposition but emerged after the case was remitted, specifically targeting Auxiliary Requests 3 and 4.

The Opposition Division's preliminary opinion suggested that this fresh ground of opposition could have been raised earlier against the patent as granted, and indicated an intention not to admit it due to a lack of prima facie relevance, referencing Article 114(2) EPC. However, no final decision was made on this issue, leaving the objection as a "carry-over objection" that was raised and maintained but not resolved due to the allowability of a higher-ranking claim request. The Board had to determine whether the objection was admissibly raised and maintained in the proceedings leading to the decision under appeal, as per Article 12(4) RPBA. The Board clarified that if a submission was admissibly raised and maintained, it must be admitted into the appeal proceedings, whereas if not, its inclusion is at the Board's discretion.

The Board explained that the RPBA does not explicitly define "admissibly raised," but interprets it as a reference to admittance into the proceedings. This interpretation aligns with the use of "admissibly raised" in Article 13(1), fourth sentence, RPBA, which pertains to resolving issues raised by another party in the appeal proceedings. A submission is considered "admissibly raised" if it would have been admitted by the first-instance department had a decision on its admittance been made. The Board assesses whether the first-instance department had discretion not to admit the submission and, if so, how it would have exercised that discretion, considering the Guidelines for Examination applicable at the time.

In this case, the Board concluded that the Opposition Division had discretion not to admit the objection under Article 100(b)/83 EPC, as it was late-filed after the opposition period ended, per Article 114(2) EPC. The Board noted that the Guidelines for Examination require consideration of relevance, procedural state, and reasons for late submission, with emphasis on prima facie relevance. The Board determined that the objection lacked prima facie relevance, being a mere allegation without substantiated doubts. Consequently, the objection was not admissibly raised, constituting an amendment under Article 12(4) RPBA, which the Board decided not to admit into the appeal proceedings.

Summary

Both T 1178/23 and T 0823/23 highlight the need to assess whether submissions were admissibly raised in initial proceedings, focusing on the first-instance department's perspective. Under Article 12(4) RPBA, it's crucial to evaluate if the department had discretion to admit a submission and how it would have exercised this discretion, considering the applicable guidelines at the time. The decisions stress the importance of the Guidelines for Examination in determining admissibility, ensuring the appeal process respects initial decisions and maintains procedural fairness and consistency.

Take home message

Both decisions underscore again the importance that, in order to ensure that Auxiliary Requests and/or arguments are deemed "admissibly raised and maintained" and thus avoid refusal under Article 12(4) RPBA in subsequent appeal proceedings, they should be filed as early as possible in the first-instance proceedings, or at the latest within the deadline set under Rule 116 EPC.

Part 2 - How broad does the UPC's jurisdiction extend?

The recent ruling by the CJEU in BSH v Electrolux has made an inescapable and sizeable impact on European cross-border patent litigation, ostensibly reopening a horizon of cross border enforcement via national proceedings at the courtof a defendant's domicile. Indeed, in BSH itself it will presumably follow that:

• The patentee returns to a national court (bifurcated, infringement-only proceedings in Sweden) to pursue patent infringement against a defendant under EP designations spanning Sweden, Germany, Spain, France, UK, Greece, Italy, the Netherlands and Turkey;

• The defendant, in principle, can defend itself using both non-infringement and invalidity arguments of commensurate and supra-national scope, albeit only to achieve a finding of non-infringement (and not invalidity ¹); and

• The national court will need to decide and determine the applicable law for governing the supra-national dispute and make case management decisions, including as to how the parties admit evidence of any applicable law under national rules of procedure and whether to stay infringement of any one or more part(s) (e.g. if any EP designation is or becomes subject to a parallel revocation proceeding).

By reopening and highlighting such possibilities in national courts, the question has been inevitably raised about whether the playing field has suddenly been levelled between national courts and the UPC (and indeed, between EPs and EPs with unitary effect). The answer must be a yes, BUT only to a degree. For example, while the same or similar possibilities are on the table, BSH only deals with a domiciled national entity that acts cross-border across Europe, which is a factual basis not present in all fields/supply chains. And psychologically, cross border possibilities align more closely with the foundations of the UPC as a common court. Further, many will firmly argue that the procedure and, perhaps most importantly, speed mean that the playing field is firmly sloped in favour of the UPC.

Certainly, it may have been a surprise that BSH and the national courts stole headlines that were otherwise expected to come from UPC cases advertising the scope of remedies available. That said, some of the early UPC cases successfully obtained far-reaching  preliminary measures / injunctions and made a lot of noise, publicising the scope of their instantly enforcement remedies. Alongside some high profile rejections (and overturnings by the UPC Court of Appeal), there was also a sense that many patentees had kept their first ventures into the UPC deliberately focussed on UPC contracting states. That of course makes a lot of sense, including to avoid getting bogged down in jurisdictional objections that might otherwise delay and distract the sounder pursuit of nonetheless significant remedies spanning 17 (now 18) countries. It may also be met by unwelcome (and costly) parallel proceedings.

Nonetheless, some patentees have been more ambitious in the geographic scope pursued at the UPC. And while have presumably stalled, changed tactics or settled, actions of some of the more far-reaching claims were made (even before BSH) and are now coming through and testing the UPC's power to reach beyond the boundaries of its contracting member states; especially with respect to full proceedings and final remedies.

Early signs in German local divisions

Befitting of their popularity, infringement proceedings at German local divisions between Fujifilm v Kodak were already making their own headlines while the CJEU's decision in BSH was awaited. In these cases, 3 orders/decision in 3 proceedings about 3 different EPs were issued in the same week at the end of January 2025:

• In Mannheim, two decisions/orders dated 22 and 30 January 2025 arose from interim conferences in 2 of these 3 actions. In both cases, the Judge Rapporteurs (Böttcher and Tochtermann respectively) contended with an issue under the heading of "Permanent Injunction in the UK", which inferred the question of whether cross-border, final measures could be awarded outside UPC contracting states. Both decisions decided to separate that issue from the main proceedings and stay its hearing pending the CJEU's decision in BSH. (An apparently combined trial of the two main proceedings took place from 11-13 February, the result of which is awaited.)

• In Düsseldorf, there is apparently no public decision from an interim conference, the trial had already taken place on 12 December 2024, from which the order/decision issued on 28 January 2025. There was no separation or stay in this case, and the UPC panel proceeded to consider whether a final injunction in the UK could be awarded, regardless of the CJEU's decision in BSH. Despite finding the patent invalid, and thereby rejecting any final remedy to the patentee at all, the panel was keen to set out (in the first sentence of the first headnote) that it would have had jurisdiction to award a final injunction in the UK.

Hence, in the wake of the CJEU's decision in BSH (delivered on 25 February 2025), the UPC (or at least the Düsseldorf local division) could already see the wave coming as to the possibilities of cross border enforcement.

The Fujifilm decision in Düsseldorf - pending any further guidance if appealed - provides a strong indication that the UPC can  and will handle claims of cross-border infringement of patents outside the scope of the UPC, such as EP(UK). However, there is not a lot of guidance of precisely how it case managed such issues, in particular as (unlike the two decisions/orders from Mannheim) there is no order from an interim conference.

In particular, if BSH might be described as allowing cross-border enforcement on the basis that defendants can defend it using invalidity arguments, it seems pertinent that the UPC's RoP 25 states that (emphasis added):

"If the Statement of defence includes an assertion that the patent alleged to be infringed is invalid the Statement of defence shall include a Counterclaim..."

In the Fujifilm decision in Düsseldorf, there was only a counterclaim for invalidity of the EP(DE) (the only designation other than EP(UK) in suit). The Düsseldorf panel felt able to transpose that counterclaim to the EP(UK) based on statements made by the defendant and the (lack of) statements made by the patentee. As such there was no debate, for example, as to the applicable law or how the validity (or infringement) of the EP(UK) may have been handled under UK law. Again, this is in stark contrast to the two decisions in Mannheim which emphasised (albeit with the EP(UK) injunction stayed), the importance at trial of determining the law (national or UPC) applicable to infringing acts of even EPs in force in UPC states (and presumably, if national law was applicable, how the parties' evidence addressed the same).

Noises from Helsinki

It was not only the German local divisions that were making noises about cross-border infringement, and since the Fujifilm cases, the was an interesting decision in AIM v Supponer dated 10 February 2025, in which the UPC's Helsinki local division allowed and ordered the addition of non-UPC state defendants into the proceedings in the UK and Spain. The perhaps more interesting and far-reaching of these additions was of a UK defendant, but its addition related to acts committed in Germany (not the UK). The addition of a Spanish defendant did add both a defendant and a new jurisdiction to the list, but this did not appear to raise any objection based as to jurisdiction.

In an action that was originally one of the first before the UPC and sought far-reaching provisional measures, it remains to be seen how this now much slower, main proceeding will play out (especially given the introduction of another period of 3 months for the defence by the newly added parties).

Paris lays down a clearer marker

If Fujifilm and AIM can be said to have been predictive or suggestive of cross-border possibilities at the UPC, the Paris Local Division has now joined the discussion and delivered a strong signal of the UPC's approach post-BSH.

In a decision just last week, 21 March 2025, in IMC Creations v Mul-T-Lock, the local division has:

(1) applied BSHby finding the UPC has jurisdiction for acts of a domiciled entity (in FR) for acts across UPC states in Spain, Switzerland and the UK; and

(2) (seemingly ²) extended BSH, by finding the UPC has jurisdiction for acts of a group entity (in CH) in the same scope  - i.e. in particular in Switzerland (and the UK)

The infringement action was lodged in November 2024, putting the patentee, IMC Creations, in the more ambitious category of claimants. They commenced full infringement proceedings against Mul-T-Lock based on an EP with unitary effect across UPC members states AND the related EP in the UK, Switzerland and Spain.

The defendants (Mul-T-Lock entities in France and Switzerland) filed a preliminary objection, which ultimately addressed both BSH and Fujifilm (Düsseldorf), concerning which the defendant's arguments appeared to state:

• BSH should not apply at the UPC because patents of "third countries" simply do not constitute the matter governed by the UPC's treaty of origin - i.e. the UPC agreement; and

• Fujifilm (Düsseldorf) is open to criticism and its reasoning cannot be transposed to a non-EU third country like the UK.

The UPC Paris Local division rejected these arguments, in particular based on the French defendant's domicile, affirming the UPC's jurisdiction over the Spanish, Swiss and UK designations of the EP for acts by that defendant. Interestingly, the decision gives further reasoning that is apparently split:

• On the one hand, grouping the Spanish and Swiss EP designations together (on the basis that the Brussels Regulation (Spanish) and Lugano Convention (Swiss) have aligned outcomes) and finding the UPC has jurisdiction (including re an invalidity defence) provided it can decide whether to stay UPC proceedings should national proceedings commence; and

• On the other hand, saying for the UK that it can proceed (again, even with invalidity) on the basis that any outcome would be inter partes.

In terms of the French Mul-T-Lock entity, this reasoning is aligned with BSH, albeit any such distinction/split would be interesting if it suggests that infringement of the EP(UK) patent could proceed before the UPC on a different basis to EPs in EU/Lugano member states, including e.g. if there is a different (or no) assessment as to whether a stay is considered versus any parallel national action. The latter is one of the key questions arising from BSH, i.e. the power of defendants to torpedo or block cross-border enforcement actions.

However, more significant is the drawing in of the Swiss Mul-T-Lock entity, for which there seems to be very little dedicated reasoning, save for reference to BSH. This issue is not directly addressed in BSH,and there are open questions about the BSH's impact on multi-defendant actions. This relates to Article 8 of the Brussels Regulation (for EU-based defendants) and the drawing in of multiple defendants to avoid irreconcilable decisions. Article 8 is mentioned in the UPC's decision, but not discussed. There also seems to be no detail on the factual matrix; albeit the two entities appear be alleged to be involved in infringing acts entities in multiple countries. Further, there is no consideration of other significant CJEU cases, such as Roche v Primus and Solvay. Whether these issues are revisited, including in any appeal will be one to watch (or per footnote 2 above, if this actually falls away if the Swiss defendant is dropped from the action). In any event, the case seems to be a strong signal of the UPC's appetite and intent to take on cross-border jurisdiction in which, at least all designations of an EP can be pursued against all/any group entities in EPC states.

Take home messages

The UPC offers a significant scale of remedies across its 18 contracting states. Now the caselaw on many substantive and procedural issues is being clarified, the well timed CJEU decision in BSH seems likely to trigger even more actions which challenge that the UPC is limited only to those 18 contracting states.

Indeed, the caselaw now being issued shows that a number of farther-reaching actions have already been filed and are now coming through. Further, some UPC divisions have been happy to rule on these issues irrespective of the CJEU's decision in BSH. This might also suggest, as a number of commentators have speculated, that the UPC might be less inclined to refer questions to the CJEU compared to national courts.

The initial signs are that the UK, Spain, Poland, Switzerland and perhaps Turkey are the most obvious far-reaching targets in the sights of patentees at the UPC given the harmony provided under the EPC. However, questions have been raised about the possibility of aiming even farther field, for example to non-EPs like the US and China. And there is an obvious temptation to combine the principles of BSH with other aspects of the UPC's long arm jurisdiction, for example, not just defendants domiciled in the UPC states but to true, "third country" defendants.

Overall, BSH seems more of a coincidence than something that was necessary to open up possibilities before the UPC. And similarly, it seems more likely that going forwards, patentees will be eager to test the broadest scope of possibilities offered by the UPC forum rather than national courts.

¹ Note: Sweden is a bifurcated court system and so in any event, national infringement proceedings are separate to invalidity proceedings.

² This caveat arises from the suggestion in the decision that the claimant dropped its claim against the Swiss defendant. This is seemingly inconsistent with the remainder of the decision which refers to both defendants (Swiss and French), even the order which refers to both defendants filing a defence.