Appleyard Lees

Avoiding the UPC

To avoid exclusive UPC jurisdiction for classically validated patents, the Applicant will have to opt-out each European patent during a transitional period. Once opted-out, infringement and revocation proceedings will need to be brought before national courts in each ratified state as happens now. The transitional period will initially be a 7-year period. After the transitional period ends, it will not be possible to opt out classically validated patents or pending European patent applications and UPC jurisdiction will only be able to be avoided by filing national patents.

  • Applications can be opted-out to avoid the exclusive jurisdiction of the UPC.
  • We recommend formulating and applying a strategy to existing portfolios before the UPC enters force.
  • Opting out patents granted during the transitional period can become part of the grant procedure.

The Transitional Period

Classically validated patents can be opted-out during a transitional period. The transitional period will initially be a 7-year period. But that may be extended for further 7-year periods (possibly until the UPC has established case law and procedures that users are happy with). European patents granted after the transitional period or classic validations and applications not already opted-out, will not be able to be litigated in national courts. Once opted-out, the patent is opted out for the life of the patent. But the patent can be opted back in. However, a classically validated patent cannot be opted-out once an action under the patent has begun at the UPC.

Each European patent will need to be opted-out individually. An opt out covers all classic validations of that patent. The procedure is not yet known. But there will not be any official fees to opt-out. The register will be kept by UPC.

There is likely to be a SUNRISE register for registering opt out of legacy patents before the UPC enters force. The SUNRISE register will likely be run by UKIPO and may open in 2017. The UKIPO register will be copied over to UPC register as soon as UPC enters force.

Should clients expose their patents to the UPC?

Issues for consideration include:

  • Do they want to attack across EU in one action or multiple?
  • Are they happy for their patent to be revoked across EU in one action or multiple?
  • Comparison of court fees, cost exposure, damage awards
  • Certainty of EPC rules, procedures and case law – particularly in early days.
  • Which tests for novelty / IS will each court adopt and is that good or bad for the patent?
  •  Claim construction case law
  • Is the patent a ‘crown jewel patent that is critical to product (e.g pharma)? In which case negative risk of single revocation probably takes precedent.
  • Is the product covered by multiple patents (e.g. TV’s)? in which case positive risk of virtual pan EU injunction probably takes precedent.
  • Is the patent a ‘burner’ patent that is not critical which can be used to expose client to UPC? E.g. for prestige, to have an influence on precedents etc
  • European opposition or UPC revocation

Paul MisselbrookPartner

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