Katharine Stephens Laura Holt
Partner, UK Associate, UK
Bird & Bird
A: Asia: Beijing, Hong Kong,
Shanghai, Singapore & Sydney
W: twobirds.com
The Unitary Patent (UP) and Unified Patent Court (UPC), expected to be operational in 2016, will substantially change the European patent landscape with knock on effects for those conducting business in the region.
Currently, patents in Europe are obtained on a national basis by application to the patent offices of each country or centrally through the European Patent Office (EPO). Either way, separate national rights are granted whose infringement and validity is a matter of national law, determined by the national courts. Under the new system, when patents applied for at the EPO grant, patentees will be able to choose whether they grant as a single right covering at least 25 countries (a UP) or as today, as a bundle of national rights validated in selected countries (a European Patent or EP). The new court, the UPC, will have jurisdiction to determine the validity and infringement of UPs and, by default, all granted EPs, including EPs which grant before the UPC is established. This will mean that EPs can be revoked and enforced centrally through a single set of proceedings and the national courts will no longer have jurisdiction to determine the issues. However, during a transitional period of at least 7 years it will be possible to opt-out EPs from the jurisdiction of the UPC and steps need to be taken now to assess the impact of an opt-out:
- If you are a patent holder, opt-out may offer strategic advantage where you perceive a threat of revocation or a weakness in your portfolio as it prevents central revocation. If you have pending applications at the EPO, you will need to consider whether they should grant as UPs.
- If you are a licensee, consider if you want patentees to opt-out. If you are a licensor, consider whether you want licensees to have the right to bring actions in the UPC. Exclusive licensees will have the right to bring infringement proceedings at the UPC in respect of patents which are not opted out unless the licence provides otherwise.
- If you conduct business in Europe or are looking to expand into the region, monitor whether your competitors opt-out. Those looking to clear the market can exploit the UPC to centrally revoke non-opted out EPs whilst patent holders may seek to monetise portfolios through central infringement actions so potential threats should be evaluated carefully.
