Unitary Patent Information Series (Article 6) – Tactical issues

03 January 2014

Tactical issues

 The Unitary Patent and the Unified Patent Court present a major opportunity for owners of inventions to obtain patents that provide more effective protection for their inventions than they can achieve at the moment, and potentially at lower cost.

Whether these opportunities will actually arise depends on decisions to be taken by the various European legislators. If the national parliaments are not cooperative, the promised system may not even come into force. If the rule-setting bodies set the official fees too high, the system will not be attractive and will not be used to the fullest extent possible.

Assuming that the system does come into force, one specific opportunity presented by the UP and the UPC is the possibility for owners of inventions to obtain patents that can be effectively enforced across a very large commercial market. It will not be necessary to take separate legal proceedings in each individual country. 

Although there is notionally a Unified Patent Court, the UPC will operate in several different divisions, and in many situations there is likely to be an opportunity for a patentee to select a favourable jurisdiction in which to begin litigation. For example, the patentee might be able to select a local or regional division for infringement proceedings, such that bifurcation of proceedings will likely ensue if the defendant counterclaims for revocation of the patent. Such bifurcation would mean that the question of infringement is decided without an opportunity for the defendant to argue that the patent is invalid. Furthermore, once the UPC begins hearing cases it might turn out that some divisions are, say, more amenable to granting a preliminary injunction before a full trial, and/or have procedures allowing the patentee to obtain evidence from an alleged infringer, and/or have a more advantageous speed of proceedings (whether fast or slow), all of which could be advantageous to a patentee depending on the particular circumstances of a given situation.

At the same time, patentees and competing businesses need to be aware that it will be possible to have a UP revoked across the whole of the EU in a single procedure. Thus, there is a risk for companies doing business in Europe that a patentee will obtain a pan-European injunction against them.

These competing factors mean that in many cases it will not be a straightforward decision for an applicant as to whether to make use of the new system.

What needs to be done and when?

Even at this early stage, patent owners should start to consider whether they want their European patents to be subject to the Unitary Patent regime. If not, they may consider whether to file applications as national applications instead of through the EPO.

As soon as the UPC Agreement is ratified, patentees will need to decide whether each newly granted patent should become a UP, or whether it should become a bundle of national patents as under the existing system. The patentee’s decision here might depend, amongst other things, on the levels that are set for the renewal fees to be applied to UPs. It is possible that this might be significantly more than the renewal fees that apply at the moment in the most commonly designated EP states. If that is the case, many patentees will need to pay significantly higher renewal fees than at present, and so they will need to decide whether that higher expense is justified by the greater territorial protection given by a UP.

A patentee might be able to use a granted UP to obtain an injunction to prevent sales of a product across a large territory, particularly if it turns out to be the case that some divisions of the UPC are prepared to grant such injunctions after proceedings in which the validity of the UP cannot be challenged. Therefore, companies doing business in Europe should be reviewing carefully the applications being prosecuted by their competitors, to identify applications that may be a threat in this way. In many cases, it may be advantageous to begin EPO opposition proceedings to clear the path for intended commercialisation activities.

Patentees could also begin thinking about the possibilities the UP might offer them for attacking competitors’ patents. It should be possible to ascertain, using the EPO Register, whether a given European patent has been opted-out of the jurisdiction of the UPC. If this has not been done then a single central revocation action can be brought as soon as the UP package enters into force.                    

Support from Haseltine Lake: Keeping you informed and helping you to understand and evaluate your options

Haseltine Lake is aware that the Unitary Patent Package will present our clients with both risks and opportunities. As more detailed information emerges about how the new system will operate, we will keep you fully appraised and will work with you to consider the impact of the new regime on your competitive IP strategy. We anticipate that further information may become available as follows:

  • Result of Denmark referendum on whether to ratify UPC Agreement – May 2014
  • Final version of UPC Rules of procedure – mid-2014
  • Further information on level  of UP fees – mid to late 2014
  • Further ratifications of UPC Agreement – mid to late 2014

 

List of Participating States
Austria Latvia
Belgium Lithuania
Bulgaria Luxembourg
Czech Republic Malta
Cyprus The Netherlands
Germany
Denmark
Poland (is a party to the UP Regulation but has not signed the UPC Agreement)
Estonia Portugal
Greece Romania
Finland Slovakia
France Slovenia
Hungary Sweden
Ireland United Kingdom

 

 

 

 

 

 

 

 

 

 

 

 

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