Implication of EPO decision on prior English court
decision
Summary
Although rare, a problem arises when an English court finds a
EP(UK) valid and infringed only for the EPO to find it invalid, or
the claim set amended taking the infringement outside the scope of
protection. This was the situation faced by Vodafone (Vodafone
Group PLC and ors v IPCom GmbH & Co KG [2023] EWCA
Civ 113).
The problem is particularly acute where the EPO's decision
occurs some considerable time later, and the English court may well
have reached a decision on the enquiry as to damages. Costs at the
liability stage will have been paid, often very large sums, and an
order awarding millions of pounds in damages handed down. As a
decision of the EPO has retrospective effect, the revocation of the
patent ab initio leads to an apparent injustice
having been perpetrated.
