The traditional litigation route, involving litigation before the national courts, will remain available during a 7 year transitional period from the entry into force of the UPC Agreement. Such an option is only available for non-unitary patents. Parties in patent disputes relating to nationally-validated European patents can thus choose which Court best suits their IP strategy.
An opt-out must be filed and registered within the Court’s online system if you wish to ensure that disputes relating to your patent cannot be brought before the UPC, but only 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 Although an opt-out can be filed at any time, and can be withdrawn, an opt-out can only be filed once.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 European patent applications
One of the quirks of the Unitary Patent system is the possibility for traditional nationally-validated European patents to be “pinned” either inside or outside the competence of the UPC. If court proceedings are initiated at the Unitary Patent Court by the patent proprietor or by a third party, the patent is pinned forever within the competence of the Unitary Patent Court, where it is vulnerable to central revocation.
Similarly, if an opt-out has been filed, a third party can prevent you from withdrawing your opt-out by commencing litigation in national court. This pins 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 Unitary Patent system for patentees is 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 starts 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 Unitary Patent system is the possibility for central revocation. Under the Unitary Patent system, the Unitary Patent Court invalidates a European patent, whether a ‘bundle’ of national patents or a Unitary Patent, in one procedure. The UPC is also able to issue a declaration of non-infringement which is valid in all participating member countries.
For invalidations and declarations of non-infringement, only the central division is competent. It is not possible to start such proceedings at the local or regional divisions.
Your Intellectual Property Strategy
The decision on whether to use the UPC or national courts for litigation and revocation actions can depend on several considerations:
- the number of countries where the European patent is in force;
- the strength of the patent
There is no straightforward “one size fits all” strategy: the best option varies from case to case. It goes without saying that the experts at NLO closely monitor the developments regarding the Unitary Patent system. Feel free to discuss the strategic options with your contact person at NLO.
CONTACT NLO
