Appleyard Lees

Unified Patent Court takes a big leap forward

19 December 2016
The UK Government has recently announced that it is pushing ahead with plans for a Unified Patent Court (the UPC) alongside the option of a single Unitary Patent Validation.  Once implemented, the system will allow businesses to cover and enforce certain patent rights across much of Europe through a single specialist court.

What does it mean for me?

The UPC is intended to make patent litigation more cost-effective.  For patent owners, this means it is now the time to consider how it will affect your business and to take positive action depending on the commercial approach of your business to its patent portfolio.  If this planning had been put on hold following the Brexit vote, which many assumed meant the UPC would be delayed for many years, action is needed.

The UPC is now expected to be “live” before the end of 2017.  Don’t worry, we can help!

Six month countdown – plan your strategy

Once the new measures are in place, the owner of a European Patent may choose to validate the rights as a Unitary Patent.  This will mean that for the purposes of maintenance, renewal, infringement and validity, most of Europe will be treated as a single jurisdiction.  Instead of renewing individually, attacking or defending in multiple courts around Europe, a single court can hear a case and the decision will then be binding on every other country in the system.

Sounds good, doesn’t it?

Where’s the catch?

The twist is that all patents granted by the European Patent Office (the EPO) will automatically be “opted in” to the UPC system for the countries in which they apply.  This means existing rights as well as those in the future.  Fortunately, it is possible to “opt out” of the UPC system.

How do I decide which patents to opt out?

We can help.  Ultimately, the decision will be a commercial one for your business to take.  However, we can help you make a strategic assessment of all of the circumstances, including the technology, the market conditions and the future of your business.
One option is to opt out all of your patents so that they cannot be attacked centrally through the UPC.  An alternative approach is to do nothing which will allow you to enforce your rights across most of Europe in a single court action.  Every portfolio is different and we will work with you to develop an approach which is flexible enough to protect patents which might be vulnerable to central attack, especially if they are your “crown jewels”, whilst also positioning you ready to attack using the UPC system.

What if the UK leaves the EU?

The Brexit position makes the decision about which patents to opt out of the UPC more challenging.  The UK government’s position is that the UPC is not an EU institution.  Leading barristers envisage that the UK can still participate in the UPC even if not a member of the EU.  Everything will depend on what is negotiated between the UK government and the European Union.  A clear position on what Brexit means to the UPC is unlikely to be certain until after the UK leaves the EU.  Businesses therefore need to apply caution before exposing patents that have a key UK component to the unitary validation option or UPC jurisdiction until the continuation of UK rights has been guaranteed.

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