Herbert Smith Freehills' IP team has written an article for Managing IP setting out why and how clients should be preparing for the new Unified Patent Court (UPC), which could open its doors before the end of the year now that final preparations are under way (following the Protocol on Provisional Application of the UPC Agreement entering into force on 19 January 2022).

Businesses need to act now to prepare, not only to ensure any decisions on opting their European patents out of the UPC's jurisdiction are made in advance, but also because, as noted in our article:

"The size of the combined market that can be affected by litigation in the UPC is likely to cause businesses to reassess the risk-reward ratio for enforcement of patents, particularly where previously it may not have been thought worth the time and money to enforce a European patent portfolio through national proceedings in many jurisdictions in parallel. While it will be possible for patentees to opt their European patents out of the new system, businesses that do so will still be at risk of being drawn into the UPC as a defendant to infringement proceedings and could end up facing a claim for a pan-European injunction and/or damages."

In the article, our pan-European team explore several key areas that businesses must carefully consider when preparing for the UPC. This includes: transitional arrangements and the 'sunrise period' during which owners of European patents can opt-out of the UPC's jurisdiction; the importance of reviewing the patent registers for correct ownership details; and possible pitfalls resulting from patent co-ownership, dispute control provisions in licences. We also discuss the EPO's latest guidance on its transitional arrangements aimed at helping more patentees achieve achieving unitary patent status from day 1 of the new system (see also our blog post on this here) and the continued importance of multi-jurisdictional patent litigation across Europe (including the UK) despite the arrival of the UPC:

"To enforce a patent across 'Europe', patentees will need to use fora other than just the UPC, including Spain, Switzerland and the UK, which are outside the new system - either because they have stated they have not ratified the UPC Agreement (and have declared they will not be) or because they are not EU member states and are therefore excluded. Add to this those EU member states that have not fully ratified the UPC Agreement yet (seven, including Ireland, at the time of writing) and it becomes clear that patent enforcement will continue to require some engagement with national actions on top of UPC proceedings to cover all the major European markets or true 'pan-European' reach."

You can read the full article on the Managing IP website here. Please note, this content is only available to Managing IP subscribers.

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