Is the B word now less of a curse?

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Is the B word now less of a curse?

Last September one of the speakers at our first European Patent Reform Forum described the fear of bifurcation at the UPC the "British angst". One year on and it seems that there is rather less angst around

Part of the reason for that is that lawyers from outside Germany ­– which already operates a bifurcation system for patent litigation – are finding our how the rules are likely to operate in the new Unified Patent Court.

But it is also because judges themselves are beginning to clarify the kinds of patents and patent cases that are likely to be subject to bifurcation ­– and suggesting the volume may be lower than many IP lawyers feared.

judge-buttner.jpg

At our Forum in Munich in September 2013, for example, German judge Tilmann Buttner of the Regional Court of Düsseldorf  (pictured) explained to the audience which cases he might bifurcate if he were a UPC judge.

A year later at our Forum in Paris, Buttner said that over the past 12 months he had revised his thinking and was now less inclined to bifurcate.

“Last year I talked about some cases being “bifurcation cases” and others not. I would rather not bifurcate. [UPC] courts are in a good position to render good and reasonable decisions on revocation as well as infringement because they will have a technical judge.”

“My message is that we may not bifurcate. But even if we do, it’s not all bad. The courts are likely to hand down a conditional decision that is subject to the revocation decision.”

But there is also a sense that lawyers are becoming more adept at developing new strategies to deal with new patent litigation rules.

Speaking about the two-year-old US Patent Trial and Appeal Board, Charles Larsen of Ropes & Gray told the audience: “We Americans used to fear bifurcation. Now we’re doing it”.

You can read more about the popularity of the PTAB’s procedures for parties seeking to invalidate a patent in the latest issue of Managing IP.

more from across site and SHARED ros bottom lb

More from across our site

Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
A boom in transactional work and a heightened awareness of IP have helped boost revenue for the rebranded commercial services team
Gift this article