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European Patent Reform Forum: From structure to strategy

September 19, 2013 - Hotel Vier Jahrezeiten Kempinski, Munich 
















Managing IP hosted the European Patent Reform Forum - From structure to strategy on September 19, 2013 in Munich. The event brought together private practice lawyers, in-house counsel and regulators to discuss legislative developments and contentious proposals. 

In 2015 the European patent system will change with the introduction of the unitary patent system. Currently patents are granted by the EPO and are registered and enforced nationally. From 2015 onwards, there will be a choice of either registering a patent country by country, or as a unitary patent providing protection across the twenty-five EU states. While the new system will only cover twenty –five EU states, the existing European Patent Convention has thirty-eight members; the two systems will operate in tandem.

Testimonials:

"It has been a very good programme with excellent speakers covering the most important aspects and challenges for the coming years"
Maria Oliete-Ballester, LMU / European Patent Office (2013)

"Excellent roundtable discussion about rules"
Anonymous (2013)

"Good and interesting panel discussions and lively audience"
Rainer Kuhnen, Kuhnen & Wacker (2013)

"Very useful and interesting forum"
Thalie Benveniste, Eurocopter (2013)

"A practical overview and discussion of the UPC and Unitary Patent from a range of perspectives"
Andrea Hughes, Dehns (2013) 


KEY TAKEAWAYS:

Keynote Address: Margot Fröhlinger, EPO

  • There is little doubt that the Unitary Patent and the Unified Patent Court will come into force
  • The preparatory work that member states still have to do is a bigger challenge than Spain’s legal challenge before the CJEU
  • The committee considering renewal fees for the Unitary Patent must balance the needs of users and the desire of national patent offices to receive a proportion of the revenues

The Unified Patent Court explained in detail

  • There is an opportunity for expert evidence to be accorded greater weight by the UPC than it is currently by some continental courts
  • It is still unclear whether the whole case can be brought before the central division even if there are multiple defendants, including EU and non-EU ones.
  • A sunrise period will shield those who want to opt out of the UPC from early attacks

Consultation panel: Feedback and ideas regarding draft proposals for rules of procedure

  • Opting out of the UPC can be a powerful tool in portfolio management. Many companies will opt out some, but not all, of their patents
  • There is a fear among practitioners that courts will begin to compete to attract cases
  • EPO examiners took time before they began to move away from their own national practices. That may be the same for the UPC

Bifurcation: Debunking the myths and fleshing out the facts

  • Many US and UK lawyers are fearful of bifurcation
  • There is an expectation that judges may be likely to continue with local practices, such that German courts may be the most likely to bifurcate under the UPC
  • Bifurcation can offer quicker, cheaper resolution. It can also offer more expensive, longer resolution. Lawyers need to consider the case before deciding where to litigate

The European Court of Justice and the Unified Patent Court

  • The legal and practical consequences of Italy being in the UOC but not the Unitary patent system are still unclear
  • The CJEU already has jurisdiction in a limited number of patent-related cases including SPCs and biotech patents
  • Once the UPC system is running, expect questions to be referred to the CJEU to clarify what cases can be referred to it
  • The CJEU is not one court: it is a series of different panels of differing size and importance

The Unitary Patent

  • The cost savings are still unclear, since IP owners do not yet now the level of renewal fees
  • The early Unitary Patents may not be very unitary: they will not include Italy, Spain, and EU member states other than the 10 plus the UK, Germany and France necessary for ratification

Roundtable 1: inter-industry debate - International filing/portfolio management considerations

  • Applicants should note that they will not be able to cut costs by letting some parts of the Unitary Patent lapse, as they can do with a European patent bundle
  • Applicants need to consider the enforcement options open to them when they decide whether to apply for a UP, an EP or national patents
  • Unitary Patents may be more attractive to non-EU applicants

Roundtable 2: inter-industry debate - International litigation considerations

  • The UPC may lead to forum shopping if different courts develop a reputation for being more or less patentee-friendly
  • There are still unanswered questions about the need to harmonise substantive patent law across UPC countries

ARTICLES:

The B word provokes UPC angst in Munich
There was plenty of angst in Munich last week at Managing IP's European Patent Reform Forum. Read more...

Frohlinger outlines patent reform challenges ahead
The amount of work member states have to do to prepare for the Unified Patent Court will prove a bigger challenge than Spain's opposition to the new system, EPO official Margot Frohlinger said last week. Read more...

 

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