03 April 2023
The start date for the Unified Patent Court (UPC) will be 1 June 2023. This will also be the date on which the Unitary Patent (UP) system comes into effect. Thus, many patent holders are currently considering the merits keeping their EP patents ‘opted in’ to this system.
Our UPC brochure outlines reasons why a you may wish to ‘opt out,’ but also includes some advantages of remaining ‘opted in.’ The purpose of this article is to expand on the latter, to assist weighing up the pros and cons of adapting your patent strategy such that future litigation would be through the UPC, instead of solely through the individual national courts across Europe. Thus, five advantages of remaining ‘opted in’ are outlined below.
Naturally, the first advantage of the UPC to note is that its jurisdiction covers numerous European territories (initially 17, likely extending to 25 in the coming years). Thus, relief for infringing activities across all of these territories can be sought via a single action.
Although a number of European territories have excellent patent courts, such courts tend to be a smaller ‘part’ of a wider (e.g. civil) court system, with judges potentially selected for their broad IP knowledge across different types of IP. In contrast, the UPC is a court system dedicated to patent matters and is the outcome of years of meticulous planning by patent experts toward optimisation for patents. Furthermore, given the importance of this new system to the patent profession, numerous knowledge bases have been/ are being generated on a regular basis as the UPC is being rolled out. Thus, an interested applicant/ patentee can enjoy access to a wealth of information on the UPC system at their fingertips.
Given that the EU is a single market, it is not uncommon for an infringing activity in one territory to also be taking place in multiple (or even all) other territories. A claimant may therefore have a choice of litigation venue, chosen from one of the local/regional divisions present in any of the territories where infringement occurred. This opens the possibility for patentees to make strategic venue choices.
It is also possible to adopt a strategy that makes use of both the UPC and the traditional national validation system. For example, a patent portfolio could be analysed to select members of the portfolio suited to the UPC e.g., for patents anticipated to be widely infringed across the EU (incl. in territories lacking a litigation track record). Other members of the portfolio could instead be ‘opted out’ of the UPC and proceed via traditional national validation e.g., where widespread infringement is not anticipated, and it is desirable to avoid the risk of central revocation.
Furthermore, creative ‘divisional’ application filing strategies may allow both systems to be pursued in parallel. For example, a broad ‘parent’ patent may be ‘opted out’ to be maintained via the traditional national validation system. Separately, a narrower ‘divisional’ patent (e.g. more particularly focused around a key commercial embodiment) could be set up for the UPC. This could provide a scenario where the parent patent provides a broad deterrent to infringers, and although broader it would not be at risk of central revocation, a feature of the UPC. The narrower ‘divisional’ patent, on the other hand, may have reduced risk of central revocation due to its narrow nature that could resist validity attacks.
Eventually, the UPC will have exclusive jurisdiction over all patents granted by the EPO, irrespective of whether the patent is pursued as a Unitary Patent, or is ‘classically’ validated. This situation will begin at the end of the transitional period, lasting seven years (extensible to 14 years) after the Unitary Patent system comes into effect on 1 June 2023.
Thus, by engaging in the system as it rolls out, it would be possible to begin developing experience and expertise in a system that will eventually become the status quo. By getting involved now, early users could be in a position to provide vital feedback as the system beings, playing a hand in helping to shape it. Perhaps even more appealing would be the possibility to help shape the development of case law under the UPC, for example toward establishing patentee friendly case law.
The UPC is set to be a significant commercial tool for organisations in the years to come. Our dedicated UPC and UP Hub has been created to provide updates on current developments in the UPC landscape, and to identify the potential implications for your patent portfolio.
Please contact your usual Mathys & Squire attorney or email us at [email protected] to discuss your UPC strategy in more detail.
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