bartekszewczyk
10 July 2017PatentsAlexandra Pearson and Katie McConnell

How patent owners should prepare for the UPC

The upcoming changes to the European patent system are the most radical to the patent landscape in Europe in a generation. They will affect all owners of European patents and in the near future key decisions will need to be made in order to navigate this new regime.

The Unified Patent Court (UPC) was scheduled to come into force on December 1, 2017, but recent developments (most notably the snap general election in the UK and the constitutional challenge in Germany) now mean that this will most likely be delayed until early 2018 at the earliest.

Assuming that the UPC does come into force, and that the UK chooses (or is permitted) to participate, this article looks at the practical steps patent owners should be taking in the coming weeks and months to adapt their patenting and litigation strategies to make the most of the new system, seizing opportunities and avoiding the pitfalls.

Establish strategy for existing European patents

Once the UPC is in force, all existing EPs will be subject to its exclusive jurisdiction unless positively opted out. However, during a transitional period (of at least seven years) the UPC will not have exclusive jurisdiction over EPs, meaning that an EP that has not been opted out can still be subject to national litigation unless and until it is ‘locked in’ to the UPC system by being subject to litigation in the UPC.

The right to opt EPs out of the UPC is also available only during the transitional period, and is provided to recognise the fact that the UPC makes such a fundamental change to litigating EPs. Companies will be able to exercise this ‘opt-out’ to take existing, pending and future EPs out of the jurisdiction of the UPC for the lifetime of the patent. The opt-out is revocable (unless the EP is subsequently subject to national litigation in which case the EP is locked in to the national jurisdiction).

There will be a ‘sunrise period’ which will allow opt-outs to be made before the UPC opens; this period will commence roughly three months before the UPC system comes into effect. On the previous timetable this was set for September 2017, but given the postponement of entry into force of the UPC, the sunrise period will be similarly delayed.

Deciding whether to opt out

Whether you should opt out granted and pending EPs from the jurisdiction of the UPC will depend on many factors. Looking at broad strategic options, one approach is to opt out your entire portfolio and ‘wait and see’ how the UPC procedure and case law develops from the outside. This will provide patentees with certainty as they will continue to litigate in the way that they have always done. As long as no national actions have been brought in the interim, patentees will be able to opt in the portfolio (or any part of it) at a later date when the time is right.

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