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The UNIFIED PATENT COURT 

by | Jan 17, 2024 | Welcome to All About Inventing! | 0 comments

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. 

 

OPT-OUT 

  • 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. 

LICENSE AGREEMENTS 

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. 

 

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