Making well founded decisions about opting out…

In Insights, Uncategorized

3 March, 2016

 …of the Unified Patent Court and requesting Unitary Effect for your European Patent

The benefit of requesting Unitary Effect for your European Patent is obvious to anyone, by payment of only one renewal fee, equivalent to that of four national renewal fees, a territory potentially covering 25 EU states, if all current Contracting Member States ratify the Agreement, which is a territory equal to that of the USA is available for enforcing your patent rights. This benefit must of course be weighed against the fact that the Unitary Effect comes in a package with the new Unified Patent Court (UPC). A Court which has the ambition not only to deliver expeditious and high quality decisions, the aim is to be as fast as 12 months from filing a claim to reaching a decision, but also to enhance the legal certainty, and to make it easier to enforce patents and to defend oneself against unfounded claims and claims relating to patents which should be revoked. The legal certainty is to be enhanced by providing a more uniform case law.

However, today the legal systems in the Member States of European Union differ greatly, and even though it is foreseen that only the most qualified judges, with great experience in patent cases, will be recruited, it is difficult to predict exactly how the Court, with its multinational panel of judges will in fact rule.

Since the UPC will also have exclusive competence for already granted European Patents and for European Patents granted in that transitional period, the opt out possibility has been created to alleviate patent holders from this uncertainty.

The decision to stay within the competence of the UPC, or for that matter request Unitary Effect will involve great consideration of many factors. If you are in a field where there is a high likelihood of litigation, for instance if you expect competitors to copy your design, if the patent is licensed to different licensees in different countries, or if the patent is of extremely high value to your business the patent should probably be opted out.

If the possibility to enforce the patent for several European countries quickly and at once in one Court only, or if the patent has withstood opposition or even appeal at the European Patent Office the patent, i.e. the patent is strong, it should probably be kept within the UPC.

For some companies the default setting will most likely be to opt out most of their European Patents, and of course not request Unitary Effect, until the case law of the Court emerges. For other companies, in particular SMEs the decision will most likely be dependent on, and maybe also made in collaboration with potential or current licensees.

Hopefully, even if there is still some uncertainty, we will have enough case law within the first 2-3 years to be able to make even better decisions, and to give even better advice. There are of course many more factors than those mentioned above to consider, and the advisors at Awapatent will stand by to help you and your company to make well founded decisions.

Sofia Willquist, European Patent Attorney

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