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Now is the time to prepare for the Unitary Patent and UPC

If patent owners make one New Year resolution for 2015, it should be this: try to understand how Europe’s Unitary Patent and Unified Patent Court will affect you, your portfolio and future applications

I have just written up some of the most important points that emerged from two events on European patent reform that we ran in the United States last month. But there is really just one overarching theme: US companies need to do much more to understand how the Unitary Patent and the Unified Patent Court will affect them.

Given the decades of debate and EU-style horse-trading that preceded the deal on patent reform, and the painstakingly detailed work on the small print following it (the preparatory committee, for example, is now on its 17th draft of the rules of procedures for the UPC), it’s unsurprising that many in-house counsel in the US seem to be waiting for “open for business” notices before deciding whether to apply for Unitary Patents or use the new court.

But in San Jose and New York last month, they were urged to start thinking about their strategies now. “It is going to happen”, emphasised Alexandra Brodie of Wragge Lawrence Graham & Co. (To underline her point, the UK IP Office is now consulting on possible options for the location of the UK’s part of the central division.)

While European lawyers and patent attorneys can advise companies about the rules, procedures and possible strategies, only those in the business itself will be in a position to choose which patents to opt in to the new litigation system, and which to opt out.

That is process that in-house counsel need to be thinking about now, said Rosie Hardy of Withers & Rogers. “Ideally we don’t want to be filing 20,000 opt-out requests in one day. Please start speaking to your European patent attorneys now.”

more from across site and ros bottom lb

More from across our site

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Sukanya Sarkar shares her thoughts on this year’s annual meeting in Singapore, where debates ranged from AI opportunities to improving law firm culture
The court’s ruling is a good reminder that US parties aren’t guaranteed attorney fees just because they win, say sources
With business confidence in a shaky state, Rachel Tong and Lisa Yong of Rouse discuss how in-house IP teams can manage their trademark portfolios through uncertain times
The Court of Appeal had stern words for Med-El’s representatives after they highlighted a deputy judge’s background as a solicitor
Funders and NPEs say asserting patent portfolios can minimise risk at the USPTO’s PTAB, where procedure remains a controversial topic
The US Supreme Court’s ruling wasn’t a surprise and reflects a trend that had already been bubbling away for a while, say tech and pharma counsel
Previous attempts at major transatlantic tie-ups have failed, so lawyers will keep their eyes firmly on Allen & Overy’s grand plans
INTA CEO Etienne Sanz de Acedo shares his plans if he were to win the EUIPO leadership race and says his application does not affect his INTA role
The French finance minister told António Campinos the timing of an EPO event in Lisbon could be seen as interference in the EUIPO leadership race