Breaking: UPC chief urges EU to rethink SEP plan
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

Breaking: UPC chief urges EU to rethink SEP plan

KerstinJorna.jpg
Kerstin Jorna, head of DG Grow, speaking at the UPC inauguration in Luxembourg today

Klaus Grabinski told delegates at a UPC inauguration event that the proposed SEP regulation would limit access to justice

The most senior judge of the Unified Patent Court has sharply criticised the European Commission’s draft standard-essential patent reforms.

Klaus Grabinski, chief judge of the UPC Court of Appeal, said he feared the draft SEP regulation, published last month, was not currently compliant with the EU Charter of Fundamental Rights.

Speaking at the formal inauguration of the UPC at the Hémicycle in Luxembourg today, May 30 – which Managing IP is attending – Grabinski said he felt obliged to comment on the plan.

The German judge said he was concerned that SEP owners would have to register their patents at the EUIPO before they could bring an infringement action at the UPC.

“I fully support the commission’s aim to enhance transparency, but access to justice is a core fundamental right,” he said.

Grabinski questioned why SEP owners should not be able to bring infringement actions in the EU while they could in the UK and China.

Under the commission’s draft regulation, patent owners would have to register their SEPs at the EUIPO, which would carry out essentiality checks and determine fair, reasonable, and non-discriminatory (FRAND) royalties.

They would be unable to bring infringement actions for those patents until the end of that process, which could take up to nine months.

But SEP owners would still be able to seek “provisional injunctions of a financial nature” while the EUIPO process was ongoing.

SEP owners had seen the UPC as an attractive option, mainly thanks to the prospect of Europe-wide injunctions.

But it’s unclear what role the new court will play in the future of global SEP litigation if the commission’s plan is realised.

“I have no doubt that the regulation will be fully compliant with the EU Charter of Fundamental Rights after it has gone through the [full] legislative process,” Grabinski added.

Kerstin Jorna, head of DG Grow – the EU body that drew up the proposal – also gave a speech but did not comment on Grabinski’s remarks.

Jorna spoke instead about the importance of intellectual property to the EU single market and encouraged all member states to join the unitary patent system.

The UPC will open on Thursday, June 1.

more from across site and ros bottom lb

More from across our site

Partners and other senior leaders must step up if they want diverse talent at their firms to thrive
European and US counsel reveal why they are (or aren't) concerned about patent quality and explain how external counsel can help
Firms such as Bird & Bird and Taylor Wessing have reported rising profits and highlighted the role of high-profile IP disputes and hires
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
Gift this article