{"id":54243,"date":"2026-06-15T17:26:16","date_gmt":"2026-06-15T15:26:16","guid":{"rendered":"https:\/\/www.studiotorta.com\/?p=54243"},"modified":"2026-06-15T17:28:58","modified_gmt":"2026-06-15T15:28:58","slug":"upc-vs-epo-divergences-on-validity-non-conflicts-and-management-of-the-two-track-system","status":"publish","type":"post","link":"https:\/\/www.studiotorta.com\/en\/upc-vs-epo-divergences-on-validity-non-conflicts-and-management-of-the-two-track-system\/","title":{"rendered":"UPC vs EPO: divergences on validity, (non-)conflicts and management of the two-track system"},"content":{"rendered":"
    \n
  1. A new structural \u201ctwo-track system\u201d<\/strong><\/li>\n<\/ol>\n

    The entry into operation of the Unified Patent Court (UPC) has made structural the co-existence of two bodies before which the validity of a European patent may be challenged: the EPO by filing an opposition (and a possible appeal before the Boards of Appeal) and the UPC, by means of a revocation action (as well as a counterclaim for revocation in infringement proceedings). This co-existence is not a mere procedural overlap: it is a system that inherently produces results at different times and, in some cases, with diverging outcomes. It is therefore important not so much to assess whether divergences may occur, but rather how the system \u2013 and in particular the Court of Appeal (CoA) of the UPC \u2013 qualifies and manages them.<\/p>\n

    From a legislative framework perspective, the link between the two types of proceedings is weak: the UPC has its own agenda aimed at maximum efficiency (rapid decisions, concentrated case management), while the EPO operates according to its own timetable and rules. Consequently, the parties must plan parallel litigation strategies, with inevitable costs, risks and opportunities.<\/p>\n

      \n
    1. Divergence does not necessarily mean conflict: the position of the Court of Appeal (CoA)<\/strong><\/li>\n<\/ol>\n

      The Court of Appeal (CoA) of the UPC has clarified a distinction that is set to become the interpretive key for the entire topic: the difference between parallel revocation proceedings (UPC) and opposition proceedings (EPO), on the one hand, and between parallel infringement proceedings (UPC) and opposition proceedings (EPO), on the other hand.<\/p>\n

      2.1 UPC revocation vs EPO opposition: different outcomes, but not \u201cirreconcilable\u201d<\/strong><\/p>\n

      In the order\u00a0Carrier v BITZER<\/em>\u00a0(UPC_CoA_22\/2024, 28 May 2024), the Court of Appeal (CoA) held that diverging decisions between the UPC and the EPO on the revocation of a European patent are not irreconcilable (\u201cirreconcilable<\/em>\u201d): if one forum upholds the patent and the other revokes it, the revocation decision \u201cprevails\u201d and the system tolerates this occurring without generally imposing a stay of the UPC proceedings.<\/p>\n

      The explicit reason is also organisational: the UPC must be able to meet the objective of issuing a decision within a time limit of approximately one year from the commencement of the proceedings, and extensive recourse to the\u00a0stay of proceedings<\/em>\u00a0in the event of a concurrent opposition would make that objective unattainable. For this reason, the CoA has formulated a rule of principle: as a rule, the proceedings before the UPC must not be stayed.<\/p>\n

      2.2 UPC infringement vs EPO opposition: the risk of conflict is real<\/strong><\/p>\n

      In the subsequent order\u00a0Meril v Edwards<\/em>\u00a0(UPC_CoA_511\/2024, 21 November 2024), the CoA developed a concept that represents the other side of the coin: while revocation and opposition can coexist without being irreconcilable, the assessment of infringement and a concurrent opposition can come into conflict, especially in the case where the EPO revokes the patent that forms the basis of an order issued by the UPC in infringement proceedings (consider injunctive measures or other orders that assume validity as an operative prerequisite).<\/p>\n

      From this perspective, the\u00a0stay of proceedings<\/em>\u00a0becomes an instrument of \u201csystemic hygiene\u201d: not because the UPC is bound by the decisions of the EPO, but to prevent the UPC enforceable order from being undermined in its underlying premise by a subsequent EPO revocation. Indeed, the CoA has openly stated: the\u00a0stay<\/em> of proceedings<\/em>\u00a0serves \u201cin particular\u201d to prevent conflicts between UPC decisions on infringement and an EPO revocation in opposition.<\/p>\n

        \n
      1. The practical rule on the stay: \u201cno-stay\u201d as default, targeted exceptions and discretion<\/strong><\/li>\n<\/ol>\n

        3.1 In revocation actions the\u00a0stay of proceedings<\/em>\u00a0is an exception<\/strong><\/p>\n

        Also in\u00a0Carrier v BITZER<\/em>, the Court of Appeal (CoA) has linked the interpretation of Art. 33(10) UPCA and Rule 295(a) RoP to principles of efficiency and reasonable duration: the stay of proceedings cannot become the norm, otherwise the UPC is unable to meet its own timeline.<\/p>\n

        Furthermore, the CoA has clarified two operative elements:<\/p>\n

          \n
        1. The mere existence of an opposition before the EPO is not sufficient to justify the\u00a0stay of proceedings<\/em>.<\/li>\n
        2. The acceleration of oppositions obtained at the EPO is also relevant, but not sufficient: what matters is whether an EPO decision can be expected “rapidly<\/em>” according to a concrete assessment of the circumstances.<\/li>\n<\/ol>\n

          3.2 The\u00a0stay<\/em> of proceedings<\/em>\u00a0in infringement proceedings: “rapidity” does not require a final EPO decision\u00a0<\/strong><\/p>\n

          The order\u00a0Meril v Edwards<\/em>\u00a0is of particular importance because it has clarified that, for the purposes of Art. 33(10) UPCA and Rule 295(a) RoP, it is not necessary for the expected EPO decision to be final and no longer subject to appeal. The Court of Appeal (CoA) explains that, unlike other provisions (which make express reference to a decision that must be ‘final’), Art. 33(10) UPCA and Rule 295(a) RoP only require that a decision can be expected rapidly; therefore, even a decision of the Opposition Division, albeit appealable, can meet this prerequisite.<\/p>\n

          However, the Court of Appeal (CoA) has strongly reiterated that the stay remains a matter of discretion (\u201cmay<\/em>\u201d), and that the choice depends on a balancing of the stage of the EPO proceedings, the stage of the UPC proceedings, the likelihood of revocation, the conflicting interests of the parties and other concrete factors.<\/p>\n

            \n
          1. Four typical scenarios and their respective practical effects<\/strong><\/li>\n<\/ol>\n

            Experience from parallel litigation shows that the relationship between the UPC outcome and the EPO outcome tends to fall into certain recurring configurations, each with distinct impacts on enforcement, freedom to operate and legal certainty.<\/p>\n

              \n
            1. The UPC revokes the patent and the EPO subsequently maintains it: this scenario produces fragmented protection (patent ineffective in UPC territories but potentially effective elsewhere), with immediate impacts on commercial strategy and licensing.<\/li>\n
            2. The UPC maintains the patent (also in amended form) and the EPO subsequently revokes it: the subsequent revocation by the EPO can \u201coverturn\u201d the scenario, with repercussions on contracts, royalties and enforcement initiatives already underway.<\/li>\n
            3. The EPO revokes the patent before the UPC decides: the EPO revocation can nullify or drastically reduce the value of the UPC litigation, altering the negotiation dynamics between the parties.<\/li>\n
            4. The EPO maintains the patent (also in amended form) and the UPC subsequently revokes it: this produces a mirror effect to the first scenario, with new fragmentation and consequent uncertainty over industrial planning.<\/li>\n<\/ol>\n

              These outcomes are consistent with the CoA’s position in principle: in the revocation\/opposition relationship, the idea is that they are not “irreconcilable” in a technical sense, and that the system can tolerate successive decisions even when they generate temporary divergences.<\/p>\n

                \n
              1. Impact on businesses: uncertainty, \u201cwindowed\u201d enforcement and risk volatility<\/strong><\/li>\n<\/ol>\n

                5.1 Risk of dual outcome and business uncertainty<\/strong><\/p>\n

                When the UPC and the EPO proceed in parallel, the probability that the UPC will issue a decision first is high, particularly if the opposition before the EPO is still in an early stage. Since the CoA advocates the \u201cno-stay\u201d as the prevailing practice, the consequence is an increase in uncertainty in terms of FTO, investment choices and market planning: a company may find itself operating in a context where the same patent is treated differently depending on the territory and the time. The case-law construction on the stay of proceedings \u2013 strict in revocation, more sensitive to the risk of conflict in infringement \u2013 reveals the UPC’s view that such uncertainty is considered an \u201cacceptable\u201d price of the system.<\/p>\n

                5.2 Enforcement and \u201cstop&go\u201d<\/strong><\/p>\n

                The most sensitive aspect is infringement: an injunction or other enforceable order, issued by the UPC while an opposition is pending before the EPO, can generate periods of operational \u201cstop-and-go\u201d. This is precisely why the CoA, in\u00a0Meril v Edwards<\/em>, insisted that conflicts between proceedings for the assessment of infringement and oppositions should be avoided \u201cin principle\u201d, and that the\u00a0stay of proceedings<\/em>\u00a0is a useful tool in this context, even if the expected EPO decision is subsequently appealable.<\/p>\n

                5.3 Valuation and pricing of IP assets<\/strong><\/p>\n

                In the field of corporate finance (M&A, licensing, securitisation), the volatility generated by unsynchronised outcomes complicates due diligence: it is not sufficient to estimate the “strength” of the patent; it is also necessary to consider the probability of divergence and the time lag between adjudicating bodies, and the economic impact of a potential reversal of the initial decision. Here too, the “no-stay” rule in revocation proceedings and the discretion of the UPC in infringement proceedings are the systemic prerequisite that fuels the need for more sophisticated valuation models.<\/p>\n

                  \n
                1. Impact on advisors and legal teams: multi-track coordination and risk governance<\/strong><\/li>\n<\/ol>\n

                  For legal teams \u2013 internal and external \u2013 the practical lesson is clear: European litigation tends to become multi-procedural by design, not by exception. This gives rise to four operational requirements:<\/p>\n

                    \n
                  1. Integrated project management: coordinating deadlines, hearings and strategies, knowing that the UPC works to reach a decision quickly and that the EPO can accelerate but not necessarily ‘synchronise’.<\/li>\n
                  2. Management of evidence and prior art: calibrating the submission of documents between differing rules of admissibility and filing deadlines.<\/li>\n
                  3. Alignment of amendments: planning auxiliary\/limited requests consistently across files, taking into account the UPC’s ‘front-loading’ and the dynamics of the proceedings before the EPO.<\/li>\n
                  4. Communicating risk to management: translating complexity into understandable scenarios, bearing in mind that a favourable decision today may change tomorrow due to the coexistence of two different adjudicating bodies.<\/li>\n<\/ol>\n

                    The approach of the Court of Appeal (CoA), with the distinction between revocation\/opposition (not irreconcilable) and infringement\/opposition (potentially conflicting), provides the very conceptual framework for structuring this risk governance.<\/p>\n

                      \n
                    1. Conclusion: physiological divergences, possible convergences<\/strong><\/li>\n<\/ol>\n

                      The EPC-UPCA system seems to have accepted that the divergences between UPC and EPO outcomes are, at least in part, physiological. The CoA does not attempt to eliminate them by providing a general rule for a stay; on the contrary, it protects the swiftness of the UPC and leaves to the\u00a0stay of proceedings<\/em>\u00a0a circumscribed role, more pronounced where the risk of conflict is substantially greater (infringement\/opposition).<\/p>\n

                      This does not mean that patent Europe is destined for permanent fragmentation: practice and case law can produce convergences, especially on methodologies and interpretative standards. But at least in the current phase, the rule of engagement for companies and professionals must be one: to design the strategy as if both venues could decide, at different times, and even differently\u2014and to prepare contractual and procedural instruments to absorb such volatility.<\/p>\n

                       <\/p>\n","protected":false},"excerpt":{"rendered":"

                      A new structural \u201ctwo-track system\u201d The entry into operation of the Unified Patent Court (UPC) has made structural the co-existence […]<\/p>\n","protected":false},"author":1,"featured_media":54244,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[593,891],"tags":[],"class_list":["post-54243","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-insights","category-up-upc-en"],"_links":{"self":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/54243","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/comments?post=54243"}],"version-history":[{"count":2,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/54243\/revisions"}],"predecessor-version":[{"id":54250,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/posts\/54243\/revisions\/54250"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/media\/54244"}],"wp:attachment":[{"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/media?parent=54243"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/categories?post=54243"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.studiotorta.com\/en\/wp-json\/wp\/v2\/tags?post=54243"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}