Dynamics

The National Wealth Fund (NWF) has committed £43.5m in direct equity, with a £10m co-investment from the Scottish National Investment Bank and the balance from existing investors. The funds raised will be used to build Pulpex's inaugural commercial-scale manufacturing plant near Glasgow, representing the NWF's first investment in Scotland since its transformation. This facility will have the capacity to make 50 million bottles annually and will create the UK's first fibre bottle supply chain, thus driving the decarbonisation of the packaging sector.

Based in Cambridge, UK, Pulpex uses sustainably sourced fibre to produce renewable, recyclable and biodegradable bottles, intended to be processed just like paper or cardboard in standard household recycling systems. Its patented and scalable technology produces an end-product that has a lower carbon impact compared to existing glass or plastic packaging formats.

IP and its protection are central to the business’s commercial plan. EIP has worked closely with Pulpex since its early stages and has three patent attorneys on part-time secondment to advise on IP strategy and provide a pseudo in-house IP function. It also has commercial IP lawyers who advise on IP-related agreements and help navigate due diligence exercises, and a wider team of patent attorneys in the UK and US who protect the company’s technology around the world as required.

Pulpex CEO, Scott Winston, comments: “Having a robust and synergistic partnership with EIP not only protects our core business in the day-to-day but provided all the support we needed for an efficient Series D fund-raising process, notably in a market environment where extra emphasis is placed on IP assets and their value assessment as a driver of growth. Continuing to work as a fluid team at all times has been a cornerstone of our success to date and will be for the future of Pulpex.”

EIP Partner, Rick Gordon-Brown, comments: "We are honoured to have supported Pulpex in securing this significant investment, which is a testament to their groundbreaking research and development work. This funding will not only enable the construction of their first commercial-scale manufacturing plant but also drive growth in Scotland and the broader alternative packaging industry. At EIP, we are proud to collaborate with Pulpex by providing essential services that protect their IP and support their commercial strategy, and are delighted that they are on track to achieve their business goals and deliver a more sustainable future."

The EIP team working with Pulpex includes:

Patent attorneys:

Rick Gordon-Brown, Paula Flutter, Rob Barker, Eric Williams, Ben Willows, Tim Belcher, Carl Bryers, Rebecca Oliver, Jack Lindley-Start, Samuel Meacham, Simona Misakova

Solicitors:

Mark Lubbock, Ellen Keenan O’Malley, Liam Rhodes

Rolex had successfully opposed Omega’s patent EP2757423 relating to a “pivot pin” (a precise component of a mechanical watch) before the EPO Opposition Division and Omega appealed. In their appeal pre-hearing submissions, Rolex argued that Omega’s appeal arguments hardly related to the decision at issue, and therefore the appeal should be considered inadmissible due to lack of substantiation under Art 108 and Rule 99(2) EPC. This admissibility attack came two and a half years after Omega’s Grounds of Appeal, and one month before the appeal hearing.

The previous case law on this topic, which is collected in the Case Law of the Boards of Appeal CLBA V.A. 2.7, mostly supports the position that admissibility attacks can be raised at any time. The Board in this case rejected this view and insisted that admissibility should be raised in a timely manner. The Board reviewed this body of case law in detail to explain its position, and it is worth looking at each case briefly to see why.

T 0289/91 is the earliest case (March 1993) and in Reasons 2.1 states:

… in the Board's judgment, an objection that the opposition is inadmissible, e.g. as in the case at issue, because the opponent is not entitled to file an opposition, can be raised at any stage of the proceedings, i.e. even at a late stage, because the admissibility of the opposition is an indispensable procedural requirement for any substantive examination of the opposition submissions, and it must therefore be examined by the EPO of its own motion. This also applies to the proceedings before the Board of Appeal.

T 0015/01 in June 2004 came to similar conclusions in Reasons 1:

… Since this issue was raised only at a rather late stage of the appeal proceedings, appellant I objected to its introduction into the present proceedings. However, admissibility issues can and have to be examined at every stage of the appeal procedure. According to established case law, the admissibility of an opposition must be checked ex officio in every phase of the opposition and ensuing appeal proceedings (T 522/94, point 3, OJ EPO 1998, 421). The same principles apply a fortiori to the examination of the admissibility of an appeal. Appellant I's procedural objection against the late introduction of the [inadmissibility] issue cannot therefore succeed.

These decisions indicate that, if admissibility is raised, it must be assessed by the EPO ex officio / of its own motion. The term ex officio is generally used to refer to scenarios where the EPO assesses grounds such as added subject matter (Art 123 EPC) without being prompted by an opposing party (see e.g. CLBA V.A-3.3.1). However, in the decisions discussed in the preceding two paragraphs, the Boards appeared to be taking an expansive view of their responsibility to examine admissibility ex officio in order to consider objections to admissibility raised by a party.

The Board in T 0670/09 took a different approach in December 2011, more reflective of the current decision T 0458/22, see Reasons 1: According to Article 12(2) of the Procedural Code, the reply to a complaint must contain the complete factual submissions. Especially since they are the prerequisite for the investigation of the facts, objections to the admissibility of an appeal or to the competence of a board must in principle be raised in limine litis, i.e. before the substantive defence of a party.

But this reasoning of T 0670/09 was not carried forward. T 0198/15, decided in March 2018 stated in Reasons 1.1-1.2:

1.1 The admissibility of the appeal was only cast in doubt by the respondent at the start of the oral proceedings. This is indeed a very late stage of the proceedings for raising such an objection.

1.2 However, it is established jurisprudence of the Boards of Appeal that the admissibility of the appeal is to be examined ex officio at every stage of the appeal proceedings (see T 15/01, OJ 2006, 153, Reasons 1), and thus also at the oral proceedings (T 501/09, Reasons 2, T 2223/10, Reasons 1). The appellant's objection that the respondent's request was filed too late in the proceedings cannot therefore succeed.

In the present case, T 0458/22, the Board agreed that the law and case law supported the view that a board can raise admissibility of its own motion at any stage. However, they felt that there was no restriction on the Board’s discretion under Articles 12 and 13 of the RPBA to exclude submissions from the parties relating to admissibility. They expressed that a submission as to whether an appeal is admissible under Art 106, Art 108, and Rule 99 EPC contains both questions of fact as well as arguments (Reasons 1.5, particularly 1.5.4). It should be noted that the Rules of Procedure of the Board of Appeal (RPBA) were updated in 2020 to further front load EPO appeal proceedings and to dissuade parties from amending their case at later stages.

Additionally, the Board decided that even though admissibility is very important (since the opposition/appeal relies upon it), this does not justify the Board having to consider an inadmissibility objection at any stage. Hence, the Board disagreed with the view given in T 0289/91 (the earliest cited case discussed above) that inadmissibility being “an indispensable procedural requirement” means the EPO must assess it any stage when requested (Reasons 1.5.5-1.5.8).

They further considered that all of the facts and evidence required to assess the admissibility of an opposition or appeal are available at the start of the procedure, so late requests cannot be justified in this way (Reasons 1.5.9).

Finally, the Board felt that even if they had permitted the inadmissibility objection, the Omega’s Grounds of Appeal were substantive enough that they were admissible (Reasons 1.8).

The Board, dealing with the substantive issues of patentability, decided to remit the opposition to the Opposition Division to decide on issues relating to auxiliary requests.

The key takeaway from decision T 0458/22 is that, even though case law is not fully settled yet, parties should raise admissibility objections at the earliest possible stage in appeal proceedings. The lack of settled case law also raises the possibility of an Enlarged Board referral if a case turns on the issue of admissibility. For now, most cases have decided the opposite of this one, with T 0670/09 being the only exception.

Nonetheless, this is the first case on this issue since the 2020 revisions to the RPBA, streamlining the appeal process into so-called “convergent approach” that severely limits amendments to a party’s case in appeal. Perhaps this case reflects this overall shift to improve procedural efficiency and signals the approach that will be taken by Boards going forward.

Decision of 27 January 2025 (Order no. ORD_4250/2025, Order no. ORD_4288/2025)

The UPC ruled that the Claimant in an infringement proceeding must provide security for costs of the Defendant. The Court further held that, despite the strained financial situation of the Claimant, that the Claimant was not eligible for legal aid because of the reduced size of security ordered.

A single judgment was published as two Orders, one relating to the provision of security and another relating to the request for legal aid. The judgment was displayed heavily redacted, with the names of both the Claimant and Defendant, and the patent involved, not published.

Background

The Defendant requested the provision of security for infringement proceedings, citing in particular the credit rating of the Claimant supplied by Tokyo Shoko Research, according to which the Claimant’s credit rating was in the category “some caution necessary”. The Defendant therefore requested that security be provided for costs in the amount of €257,000. The Claimant applied to reject the Defendant’s request and, in the alternative, to reduce the security to a lower amount. As evidence, the Claimant submitted their balance sheets for 2021 to 2023, stating that their finances were balanced, stable and trustworthy. Further, the Claimant requested legal aid for the proceedings.

Security

The Court ordered security for costs to be provided by the Claimant.

The Court held that the state of the Claimant’s finances justified the request for security. Although their financial records showed a gross profit in the most recent period, an operating loss was posted after deducting distribution, administrative and general expenses. Although the profit and loss statement ultimately showed a new profit after adding non-operating and unspecific regular income and deducting non-operational expenses, this did not justify the rejection of the application for security, since the net profit did not come close to covering the Defendant’s expected costs at the first instance. Further, the Claimant’s financial statement did not show that the Claimant had assets that would justify the rejection of the security order. The Claimant’s application for legal aid was seen as further evidence of their strained financial position.

When calculating the size of security to be ordered, the Court considered the possible costs award arising from a win for the Defendant. The upper limit, as set by the Administrative Committee of the UPC, for reimbursable costs associated with the amount in dispute was €112,000 in the first instance, and €11,000 for the court fee relating to the counterclaim for revocation. However, Art. 69 UPCA holds that costs of the maximum amount can only be determined if there are no grounds of equity to the contrary. The Court recognised that there must be a balance between assuring the reimbursable costs of representation and the principle of effective access to justice. The Claimant was held to be a small enterprise in view of its turnover and number of employees. Accordingly, the Court held that security must be calculated in such a way that effective access to justice is possible and the company’s action is not dismissed by a default judgment due to security that it cannot provide.

The security in respect of representation costs for the first instance was set at 50% of the upper limit of the reimbursable costs, and security for the court fee for the counterclaim of revocation was set at 60% of the fee. The security therefore totalled €62,600, to be paid within four weeks.

Legal aid

The application for legal aid was rejected.

The Claimant argued it would be in need of legal aid if ordered to pay the sum, which it considered exorbitant, requested by the Defendant in security for costs, which situation did not arise. The Claimant had not argued that it was in need of legal aid in view of its own costs (court fees for the infringement action, costs for its own representation). The Claimant stated in an auxiliary request that they may be able to provide a security deposit of a particular value (redacted) in the form of a bank guarantee. The ordered value was only slightly higher than this, so it was deemed that the Claimant was likely in a position to both provide the requested security, and also cover the court fees for the infringement action and costs for its own representation.

The decision was appealable.

The Court left open the question of whether companies are also entitled to legal aid before the UPC – such aid may be providable under the EU Charter of Fundamental Rights and the European Convention on Human rights, although Art 71(1) UPCA appears to restrict legal aid to natural persons.

Decision of 15 January 2024 (Order no. ORD_2647/2025 relating to EP 2 643 717)

The UPC found an LED lighting patent, held by Swarco Futurit Verkehrssignalsysteme GmbH, (“Swarco”) to have been infringed by Strabag Infrastructure & Safety Solutions GmbH (“Strabag”), due to the use of products produced by Chainzone Technology (Foshan) Co., Ltd (“Chainzone”).

Background

The Defendant, Strabag, installed LED variable message signs at various points on the Austrian road network. The signs were obtained from Chainzone. The Defendant was subsequently sued by the Claimant, Swarco, for infringement of the Claimant’s patent, EP 2 643 717. Chainzone subsequently intervened in the infringement proceedings.

The device of the patent in question aims to mix the light of different LEDs such that the intensity and direction of the produced light is maintained without forming colour differences, colour fringes or colour spots for a viewer, and doing so inexpensively and in limited space.

Validity?

In a submission, the Defendant and Intervener argued the patent in suit went beyond its original disclosure in several respects and therefore should be revoked according to Art. 138(1)(c) EPC. However, as Strabag did not file a counterclaim for revocation at the time of filing its statement of defence, their submissions relating to validity were not considered by the Court.

Claim interpretation

The light has red, green and blue LEDs arranged in front of a light guide rod, the light guide rod arranged in front of a converging lens. According to claim 1, the light guide rod has a cross-section that is constant or increases gradually, and the focus of the light-guide rod is in the area of the focus of the converging lens. Amongst other features, the lateral surface of the light-guide rod has optically high-polished planes and the material of the light-guide rod is free of light-scattering components.

A first point of contention was on the meaning of converging lens. The Defendant argued that ‘converging’ requires the lens to be spherical. However, the Court held the skilled person to understand ‘converging’ to mean focusses light to a point – the lens does not necessarily have to be spherical. Further, it was decided that real converging lenses do not generally produce a perfect focus point due to imperfections in the lens. As such, the claim wording “area of the focus” was understood to refer to a region of the focus of the converging lens.

The judgment then turned to the light guide rod. According to the claim, the cladding surface of the light guide rod has the shape of a polygon and is formed from optically highly-polished planes. This was deemed in line with the understanding of an expert who assumes that the effect of a light guide is based on the “total reflection” of its light on its inner surface. The highly-polished planes and the constant or gradually-increasing cross-section of the light guide were used to define functionally the exit of the light guide. The meaning of highly-polished was contrary to the argument of the defendant, who proposed highly-polished be taken to mean polished via a special manufacturing method.

Claim 1 additionally teaches that the material of the light guide rod in claim 1 is free from light-scattering rough components. The Court held that Par. 53-55 of the description, in combination with Fig. 4, made clear that the light guide could connect directly to the converging lens, or additional structures could be positioned in between the exit of the light guide and the converging lens. In the latter case, a scattering structure in between the light guide and the lens is not to be understood as part of the light guide rod, but as an optically-effective geometry in the area of the collecting lens.

Infringement

A significant point was the definition of the light guide rod. Chainzone’s product has a fibre optic rod with a gradually increasing cross-section arranged in front of an LED light source, a roughened scattering structure with a more sharply increasing cross-section in front of the fibre optic rod, and a lens beyond the scattering structure. Although aspherical, the lens was found to be converging according meaning of the term as discussed above.

Whether any of the roughened scattering structure was a part of the light guide rod was in dispute. According to the functional definition of the light guide rod, the light guide rod ends and the scattering section begins where the material becomes rough and no longer smooth. This meant the light guide rod did have a gradually increasing cross-section, and, moreover, analysis performed by the Defendant showed the area of focus of the lens to coincide with the exit of the light guide rod.

As discussed under claim interpretation, the patent in suit did not exclude the possibility that further optical structures may be present between the light exit from the light guide rod and the converging lens. As such, Chainzone’s product was found to have all the features of the patent in question’s claim 1 and was found to have infringed. An injunction was ordered against the Defendant.

Recall and/or removal

Along with the destruction of the directly infringing products, the Court held that the requested recall of products was justified with regard to the directly infringing product, with basis in Art. 25 UPCA in conjunction with Art. 64(2)(b) and (d) UPCA, and Par. 4 UPCA. Requiring customers to return or destroy their products (albeit at the expense of the defendant) is a strong enforcement mechanism which courts often hesitate to order given the commercial effect on non-parties to the litigation, so it is noteworthy that the UPC was prepared to order it in this case.

Publication

Whether to authorise publication of a decision, according to Art. 80 UPCA, is left to the discretion of the Court. The Court held that, given the additional sanction element of publication, the Claimant’s interest in publication must outweigh the negative consequences for the Defendant. The Court considered that, generally, granting of publication is only possible if protection of the Claimant is not guaranteed by other measures. When exercising discretion, however the purposes of Art. 80 UPCA of deterring future infringers and raising public awareness must be taken into account. The Claimant argued that publication was necessary for informing and educating the public on patent infringement. However, the Claimant did not address why publication would be necessary in this specific case. The Court therefore decided that the already-determined remedies were sufficient.

Costs

A question arose as to the extent to which an Intervener must reimburse the costs of the Claimant. According to the Court, an Intervener is treated as a party according to R. 315(4) RoP. Although the Rules of Procedure do not provide a separate rule concerning costs awards against an Intervener, R. 315(4) RoP implies an Intervener is also treated as a party with regard to costs awards. The Court determined that, in the event the party supported by the Intervener loses, a proportionate contribution to costs would be justified if the Intervener caused additional expenses for the winning party through its intervention. In any case, the Intervener must bear its own costs if it loses. In this specific case, the contents of the Intervener’s case was only dealt with during oral proceedings. This, and the fact the Intervener’s and Defendant’s arguments were very similar, indicated the Intervener should reimburse 20% of the Claimant’s costs and the Defendant the remaining 80%. The Court noted, however, that arguments favouring a different allocation could be presented in any cost determination proceedings.

The judgment provided insight into the UPC’s approach to claim interpretation and the procedural aspects of possible penalties. Interveners should bear in mind possible liability for costs incurred by the winning party in the case the side supported by the Intervener loses.