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Patent owners' support for UPC grows

With less than two years before the first patents are due to be filed under the new unitary patent system in Europe, what do IP owners plan to do with their IP filings, and where are they going to litigate them?

Research published today by Allen & Overy suggests that far more companies will use the new system than critics have suggested and policy makers had feared. The findings of a survey carried out for the law firm by pollsters YouGov, which interviewed 152 people who manage their company’s European patent portfolio, showed that close to half (49%) of those surveyed said they would definitely opt in at least some of their patents to the UPC, while only 15% say they would definitely opt out some.

When asked what percentage of their patent portfolio they were opting in, opting out, or remain undecided about, IP managers said they were opting out 9% of their portfolio, were undecided about 68%, and planned to opt in 24% of their patent portfolio.

Of those patents the companies had decided to opt in, 82% represent the business’s most valuable patents (often referred to as their crown jewels).

“We were surprised by the level of support for the UP and the UPC,” Allen & Overy’s Nicola Dagg told Managing IP.

Although she acknowledged that the survey revealed that many IP managers have still not decided what to do with all the patents within their portfolios, she said that lots of people see the potential benefits of the new system for their companies.

“They know that if you litigate in the UPC you can get an injunction that spans the UPC member countries. That makes it on a par with litigating patents in the US in terms of the size of the populations.”

Dagg added that the rules on obtaining injunctions under the UPC were analogous with those in the UK, and that they are more likely to be granted than in the US, post-eBay.

“There are still uncertainties related to the costs of using the system, but the estimated legal costs of litigating to get those results are likely to be significantly lower than in the US,” she said.

While the results may be good news for those law firms who want to capture a chunk of the UPC litigation market, their clients still have plenty of work to do before they start putting their plans into action.

Only 42% of respondents said they had decided whether to file unitary patents or use the existing European Patent system and only 39% have identified which patents to opt in and which to opt out of the UPC regime.

They will also need more information about costs before making final decisions about their portfolios.

Getting guidance about the cost of using the UP compared with the existing EP system is one of the biggest outstanding issues relating to the new system, said Dagg. “it would be good to have that sooner rather than later,” she said.

IP owners and their advisers are likely to have to wait until at least the end of the year for that information, however. A special committee at the EPO set up to consider how much the Office should charge for a unitary patent as well as the renewal fees to maintain it, met last week in Munich to consider a range of financial scenarios. It is due to hold more discussions in June, October and December.

Allen & Overy says that its research is based on a YouGov poll of large- and medium-sized patent owning businesses. Most are based in the UK, Germany, France and the Netherlands. Four-fifths have their global headquarters in Europe and almost 90% represent companies in the life sciences/pharma, telecoms/media/technology, and industrial/manufacturing sectors.

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