The Unified Patent Court (UPC) has encountered a potential procedural issue amidst over 800 cases, as there is no established legal framework to reconcile conflicting verdicts stemming from opposition proceedings at the European Patent Office (EPO) and revocation cases handled by the UPC. Unlike certain national systems, such as Germany's, which can suspend proceedings while awaiting EPO outcomes, the UPC permits a stay only if a swift decision is anticipated. As a result, discrepancies in claim interpretations for the same patent may arise. Two recent UPC decisions illuminate this intricate relationship between UPC rulings and EPO outcomes. In one ruling from February 2025, the Paris Central Division (PCD) addressed a revocation action initiated by NJOY Netherlands B.V. against Juul Labs International Inc.'s EP3504989 patent. Although the EPO's Opposition Division had maintained the patent in an amended format, the PCD similarly concluded that the original claims suffered from added matter issues but accepted the claims upheld by the EPO. Consequently, both the UPC and EPO initially aligned in maintaining the '989 patent's scope. Conversely, a later decision involving EP3613453 showcased a different outcome. In this case, the PCD opted to deny a late auxiliary request from VMR Products LLC for amending the patent, ultimately determining a distinct scope for the patent claims than that established by the EPO. As the EPO's opposition decision is under appeal, this divergence could lead to considerable ambiguity in the enforceability of the ‘453 patent across different jurisdictions. The lack of precedent regarding claim scope discrepancies between parallel UPC and EPO proceedings adds to the complexity. Patent holders must navigate this uncertain landscape carefully, balancing the need for concise auxiliary requests within the UPC framework while preparing for unforeseen developments in concurrent EPO processes.
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