The UNIFIED PATENT COURT
- The UPC Is made up of a court of first instance and a court of appeal
- The court of first instance has several divisions located around Europe, including Helsinki.
- The court of appeal is based in Luxembourg.
- There will also be arbitration and mediation centers in Portugal and Slovenia.
- The Court of Justice of the EU will be a supplementary court for preliminary rulings.
FEES & RECOVERABLE COSTS
- The fee for most actions is 11Keuros plus a “value-based fee” set according to the value of proceedings.
- Value of proceedings based on many different factors, such as the summed values of the main remedies claimed.
- Value of proceedings will not normally be the claimant’s loss of profits or the defendant’s profits gained.
- Fees etc. might still change, the final version has not been adopted by the UPC yet.
- During a transitional period of at least 7 years, it will be possible to opt classic European patents out of UPCs jurisdiction.
- If a European patent is not opted-out, it will be possible for a third party to bring a revocation action at UPC.
- A patent can only be opted out once
- Opt-outs are only for classic European patents.
OPT-OUT DECISION MATRIX
- No one size-fits-all approach to opt-outs
- There are some basic rules that could be a rough guide, based on each patents strength and importance.
- For low-importance cases, opt-out may not be needed.
- For weak, high importance cases, opt-out is important to avoid central revocation.
- Strong, high importance cases should be considered on a case by case basis.
IMPACT ON LICENSE
OPT-OUT / OPT-IN AND LICENSING
- If licenses have been granted, opt-out maybe preferred if a royalty must be paid while at least one licensed patent if in force. Avoiding central revocation may be more valuable than the ability to enforce centrally.
- Once litigation before either the UPC or national court has started, the forum is locked-in for the rest of patent life.
IMPACT ON PATENT PROSECUTION MANAGEMENT CLAUSES
- Check co – ownership of EU Patents / applications/ SPC and negotiate:
- Carefully draft future joint ownership agreements to ensure that appropriate processes are in place for managing opt-out/ opt-in and unitary effect decisions.
Even if only the patent owner is entitled, under new system, to validly opt-out/opt-in to decide what type of patent would be requested after grant, its also advisable to clarify these points in the license agreements.