Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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.


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 ros bottom lb

More from across our site

Johnson & Johnson won’t enforce patents for bedaquiline after months of public scrutiny and new licences for generics
We have published this year’s Corporate IP Stars list, an annual rankings publication which recognises senior in-house practitioners
The 2023 edition of Managing IP’s Rising Stars publication is now available online
Allison M Hester, attorney at Moye White, outlines Mattel's litigation history and explains what trademark lessons brands can learn from the toy company
The former BoA president won a high-profile race to succeed Christian Archambeau as executive director in July
Each week Managing IP speaks to a different IP professional about their life and career
Van Anh Le, assistant professor in IP law at Durham University, assesses the US-Vietnam partnership and the potential implications for Vietnam's IP landscape
Civil society and industry representatives met in Geneva yesterday, September 28 to discuss a potential expansion of the TRIPS waiver
Sources say the beta version of the USPTO’s new trademark search tool is a big improvement over the current system but that it isn’t perfect
Canadian counsel weigh in on the IP office’s decision to raise trademark filing fees in 2024 and how they’re preparing clients