MIP European Patent Forum USA 2015: Key takeaways from Silicon Valley

·         It is expected that all divisions will have English as the lead language

·         A  European Patent with Unitary Effect is a single patent right, examined and granted by the EPO. It does not cover non-EU EPC states (such as Switzerland, Norway, Turkey)

·         It's a unitary right, not a bundle of rights. Patent owners will be unable to opt out from some jurisdictions and stay registered in others, as with the current system. It is “more extensive, less expensive” – according to Penny Gilbert of Powell Gilbert

·         It is possible to opt-out from the UPC jurisdiction, at the cost of €80 per patent (price tbc)

·         Factors to consider in selecting UPC division: language, convenience for parties and cultural approach of local judges to procedural tools

·         UPC proceedings are expected to be heard within a year. “Time is of the essence,” said Sabine Agé of Véron & Associés.

·         Consider cost, success rate and what your party will gain from a decision

·         Possible effects of the decision include injunction as a matter of right, damages for infringement and revocation or limitation of the patent

·         The UPC promises to be more efficient than some national forums: hearings will be restricted to a single day

·         Fees for infringement set at €11,000 with additional fees applicable if value of litigation exceeds €500,000.

·         Must sue for infringement in local or regional division where infringement occurred or where defendant is domiciled

·         If one defendant is outside the contracting member states, or infringement occurred in a territory where there is no local or regional division – refer to Central Division

·         FRAND =  fair, reasonable and non-discriminatory

·         FRAND terms agreed through bilateral negotiation between SEP owner and implementer

·         The IPR policy of the SSO will typically require patent owners to declare any patents that they consider are, may be, or may become SEPs

·         Patent owners participating in SSOs must resolve to grant irrevocable licences for their SEPs on FRAND terms (the “FRAND commitment”)

·         FRAND terms must be agreed through bilateral negotiation between SEP owner and implementer

·         Anna Johns of Inventergy addressed the potential challenges that patent licensors face when trying to license their SEPs and how the Huawei v ZTE decision might affect some of these challenges

 

·         Consider the objectives of your party and adversary, possible tactics of the opposition and your reactions, timing and cost constraints

·         Any European patent/application granted or filed during the transitional period can be opted out of the UPC for the life of the patent

·         National patent systems remain and will act alongside the UPC

·         Not all member states have signed the UPCA (Spain, Poland have not) and all may not have ratified by the time the court goes live (expected early 2017)

·         Joachim Feldges of Allen & Overy described litigation as “a dance at least for two – or maybe three with the court dancing with you”.

·         At present, three different types of patent protection available in Europe: European patents, national patents, utility models

·         National court is main forum for litigation in each state

·         Understand the effects on your existing European patents and pending European patent applications, develop filing strategy accordingly

·         Opposition and appeal available at EPO

·         Request unitary patent within one month from grant of European patent

·         Pros of opting out: avoid central attack and avoid third parties forcing you to untested court

·         Cons: cannot obtain pan-European injunction, nor obtain pan-European damages

 

·         AIA opposition proceedings (PGR, IPR, CBM) must be completed within 12 months from institution decision by PTAB, with six-month extension possible for good cause

·         Final PTAB decision prevents further challenge in USPTO, ITC or district court

·         Prepare prosecution in anticipation of post grant challenges

·         Outcomes of EPO oppositions will take effect in all EPC states

·         DNI proceedings will take place in Central Division

·         Large-scale cross-licence negotiations extended in TMT

·         Determination of essentiality not within UPC’s exclusive competence, remains within the national courts

·         FRAND deployed as defence to infringement or in licensing disputes

·         In injunctions, in contrast to the US, no need to prove irreparable harm. Damages can be awarded simultaneously

·         FDA Safe Harbour/Bolar Exemption: UK has a restrictive interpretation limited to generics while other EU members (Germany, Ireland) have a broader interpretation

 

·         Parties control: identity of arbitral seat, location and start date of hearing

·         Arbitration is jurisdiction-specific

·         Patent disputes can be arbitrated, but revocation cannot be ordered

·         Court proceedings, not open to the public and decisions are usually confidential

·         Arbitration concludes in one decision which will apply to multiple jurisdictions. This is particularly effective when dispute focuses on damages.

Additional reporting by Natalie Canter