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What do in-house counsel think about the Unitary Patent & UPC?

James Nurton

There are many questions that remain to be answered about Europe’s pending Unitary Patent and Unified Patent Court. But perhaps some of the most important, and also most difficult, are: who will use it? What will make them want to use it? And what will scare them off?

Munich - home of the EPO and the Oktoberfest

Hopefully two forums we are hosting next month will address these questions. The panels and audience will include in-house counsel from various countries and industries, and they will be able to share their hopes and expectations on the new system.

The forums take place in two of the three locations for the central division of the UPC: the first is in Munich on September 9 and the second in Paris on September 11.

Among the speakers confirmed for both events are:

  • Jochen Meyer, head of IPR Germany at Vodafone
  • Simon Roberts, director of patents, BT
  • Jürgen Schneider, vice president, global IP & IP litigation, QIAGEN
  • Mathilde Rauline, head of European patent litigation, Sanofi
  • Richard Vary and Clemens Heusch, global head of litigation and head of European litigation, Nokia
  • Colette Vogele, director of IP policy, Microsoft
  • Michael Fröhlich, senior director, EU IP & strategy, BlackBerry

We also have judicial perspectives from Eskil Waage of the EPO (in Munich) and Tilmann Büttner of the Düsseldorf Court (in Paris).

Lively debates expected

Will the Eiffel Tower benefit from Paris's status as the home of the UPC central division?

In addition to the Unitary Patent and UPC, the forums will also feature sessions on related issues such as the role of the CJEU and the Swiss IP court.

With many companies having offices or headquarters near these two cities, we expect some interesting debates between speakers and audience on the merits of the proposed systems, and how much they will be used.

Although important questions remain to be addressed (notably about costs, who the judges are and the final rules of procedure) my impression is that many patent owners are more favourably disposed towards the new system than its critics would suggest.

That hunch was confirmed by a recent poll conducted by law firm Allen & Overy, which found that 49% of European patent managers would definitely opt in at least some of their patents to the UPC, and only 15% said they would definitely opt out some.

Meanwhile, it’s increasingly clear when you speak to patent specialists in Europe (particularly litigators) that firms are thinking hard about how to prepare for the changes. That includes by making appropriate hires, opening/expanding offices in the key locations and discussing mergers or alliances with other firms.

Time to prepare

The Unitary Patent and UPC proposals certainly do not please everyone, and they may not work perfectly to begin with, but most practitioners believe they are now going to happen – probably within the next two years – and that applicants (and third parties) need to start preparing now.

Our September events provide an opportunity to see if that is the case, and find out the latest thinking. Do come along if you can.

Attendance is free for in-house counsel, IP managers, R&D professionals and academics. All other Managing IP subscribers can take advantage of a 25% discount. Just quote: MIP25.

For more information or to register, please click here or contact Alicia Sprott:


Article Comments

It is interesting that the speakers are all from bigger companies. Despite the initial motivation for creating the Unitary patent and the UPC, which relates to helping SMEs to have a more effective protection, the more enthusiastic companies are the big ones and SMEs still fear that costs will be too high. European SMEs, but not only, have strongly reduced the countries in which they validate European Patents for reducing long term portfolios costs. Furthermore compared to national litigation costs, the estimated average costs for litigating before the UPC seems to become far higher than the ones before national courts and this with a higher risk of loosing rights for a very broad territory. The new system will thus be a further opportunity, the use of which will be subject of very precise weighting.
Prediction have been made according to which an increase in the use of national patents for selected countries is expected.

Giorgio Alessandro Karaghiosoff Aug 13, 2014

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