The existing litigation route, involving litigation before the national courts, will still be available during a 7 year transitional period for non-unitary patents, so parties in patent in disputes can choose which route best suits their IP strategy.
An opt-out must be filed and registered with the court’s online system if you wish to ensure that disputes relating to your patent will not be brought before the UPC, but before national courts. Although an opt-out can be filed at any time, and can be withdrawn, an opt-out can only be filed once.
Pinning
One of the quirks of the new system is the possibility for traditional European applications to be “pinned” either inside or outside the competence of the UPC. Before an opt-out is filed, if court proceedings are initiated at the UPC by a third party, your patent will be pinned within the competence of the UPC, where it is vulnerable to central revocation.
Similarly, if an opt-out is filed, a third party can prevent you from withdrawing your opt-out by commencing litigation in national court. This would pin your European patent outside of the UPC, thus removing your opportunity for central enforcement under the new system.
Central enforcement
Aside from the potential cost savings, the biggest attraction of the new system for patentees will be the ability to centrally enforce your patent. This means the possibility of pan-European preliminary and final injunctions, in a single legal procedure.
Litigation to enforce your patent can be started at one of the local or regional divisions or the central division. Depending on the identity of the alleged infringer and the state in which the alleged infringement is taking place, you may have a choice as to where to start court proceedings.
Central invalidation
For third parties, the biggest benefit of the new system is the possibility for central revocation. Under the new system, the UPC can invalidate a European patent, whether a ‘bundle’ of national patents or a Unitary Patent in one procedure. The central court will also be able to issue a declaration of non-infringement which will be valid in all participating member countries.
For invalidations and declarations of non-infringement, only the central division will be competent. It will not therefore be possible to start such proceedings at the local or regional divisions.
Your strategy
The decision on whether to participate in the new system, and the extent to which you do so can depend on several considerations:
- the cost of a Unitary Patent;
- the number of countries where protection is desired;
- the strength of the patent; and
- whether it is desired to opt-out the patent from the competence of the UPC.
There is no straightforward “one size fits all” strategy: the best option will vary from case to case. It goes without saying that the advisors at NLO are closely monitoring the developments regarding the new system. Therefore, it is recommended to discuss the strategic options with your contact person at NLO.
