The panel “UPC and EPO Case Law: Convergence, Divergence and Practical Consequences” examined the evolving relationship between EPO opposition and appeal proceedings and UPC revocation actions.
The session was led by Dr Natalia Wegner, Partner at Carpmaels & Ransford, and Bernhard Thum, Partner at Thum & Partner. It brought together practitioner and judicial perspectives from the Unified Patent Court and the European Patent Office.
The central point was that the UPC and the EPO are not in a hierarchy. They are independent fora that may consider the same patent, often at the same time. The practical challenge is therefore how parties, representatives and judges manage parallel proceedings with different procedural settings and developing case law.
Inventive step was at the heart of the discussion. Both the EPO and the UPC apply Article 56 EPC, but the way they structure the analysis may differ. The EPO’s problem-solution approach is built for scale: it provides a disciplined framework for examination, opposition and appeal practice across a very large number of cases. It asks parties and decision-makers to identify the closest prior art, determine the distinguishing features and technical effect, formulate the objective technical problem, and then ask whether the skilled person would — not merely could — have modified the prior art.
The UPC, by contrast, is still developing its own inventive-step methodology. The Court of Appeal has referred to realistic starting points, the claim as a whole, and the need for a pointer or motivation. This may be more flexible than the EPO’s structured sequence, but it is not unstructured. The same core discipline remains: hindsight must be avoided, and there must be a reason why the skilled person would have taken the claimed route.
The panel also highlighted added matter. In principle, both fora apply the EPO’s “gold standard” of direct and unambiguous disclosure. In practice, however, differences may emerge. The EPO is often seen as applying a strict feature-by-feature analysis, while the UPC may be more open to contextual claim interpretation, influenced by national traditions and its own developing case law.
The broader lesson was practical. Parties should not treat EPO opposition and UPC revocation proceedings as interchangeable. The same patent, prior art and claim amendments may be assessed through different procedural lenses.
The relationship between the UPC and EPO is therefore not simply one of convergence or divergence. It is a developing coexistence. For litigants, the key is to understand both systems, anticipate procedural interaction, and build strategies that reflect the specific discipline of each forum.
Disclaimer: This article is based on the author’s recollection of the panel discussion. It reflects comments made by speakers in their personal capacity and should not be read as a verbatim or complete factual summary of the debate, nor as representing the views of the organiser.