Understanding how litigation at the Unified Patent Court (UPC) compares to European Patent Office (EPO) opposition proceedings, and gaining a better understanding of UPC procedures and requirements, were identified as the two top priorities for many intellectual property (IP) professionals, when they were questioned about the UPC.
Top priorities for IP professionals were amongst the findings of the recent poll we conducted amongst the audience of 120 of IP professionals from in-house teams and attorney firms during the webinar we hosted last month on the UPC. After our UPC experts shared key insights on the UPC's approach to two of the fundamentals of European patent validity, as seen in the court's decisions so far, along with practical tips for preparing for a UPC litigation, webinar participants were surveyed on what their top next steps would be.
With improving their understanding at the forefront of both priorities, it is a clear indication that many IP professionals feel they still have much to learn about the UPC. Whilst the court may have received 500 cases1since it opened its doors and over 20,000 unitary patents have been registered2, it's evident that many organisations have yet not had first-hand experience of the UPC and its workings. In relation to validity issues, it's not surprising that companies are likely to be far more familiar with the approach adopted by the EPO, according to HLK's UPC experts.
Jamie Rowlands, IP litigation specialist and partner, commented:
"We are already seeing a decent number of interim procedural decisions and a handful of final decisions so the jurisprudence of the Unified Patent Court is growing. So far, the decisions have been generally clear and well developed which is a strong positive. This helps build confidence in the court.
"As time passes, more companies will use the UPC and this should result in a clearer understanding of procedures and jurisprudence in the court, which should then increase general confidence in the court."
Speed of UPC proceedings as a strategic tool
There are two points of the UPC system that our experts believe have become clearer to many over the last year. Firstly, the speed of cases at the UPC – 12 months from filing to trial – which is a much faster timeframe than actions at the EPO and in many national courts in Europe; and secondly, how this can be used as a strategic tool.
Jamie explained:
"On the issue of the speed of the proceedings at the UPC, it is vital that parties are well prepared. This is particularly so for defendants who only have three months to file a defence and any counterclaim which includes evidence and key documents as, in my experience, UPC proceedings are very front-loaded.
"It is vital that a defendant maximises all the time it has available to it, otherwise it will be under serious pressure to meet the defence deadline. Deadlines are generally known to be strict in UPC proceedings, unless there are very compelling reasons to the contrary."
Unfamiliarity with UPC procedures still remains
The poll results indicated that one of the top priorities of those surveyed was to gain a better understanding of UPC procedures and requirements. This denotes that many companies are still unfamiliar with UPC proceedings or certain aspects of the UPC system, despite it having been in operation for 16 months. Our UPC experts believe this unfamiliarity also extends to the pre-emptive or defensive tools available to patentees.
To illustrate this point, Matthew Howell, a key member of our UPC team and a European patent attorney, noted:
"Protective letters are a key defensive weapon for organisations that may be at risk of applications for preliminary measures, and it's important that organisations get up to speed on their use, as they are not widely understood in many jurisdictions."
A number of provisional measures could be ordered by the UPC. These range from an injunction or seizure of allegedly infringing goods to the freezing of the defendant's bank accounts and assets.
Matthew added:
"A protective letter is essentially a way for a putative defendant to get their defence in in advance of an application for preliminary measures, and can be a cost-effective way to make sure that they are heard before the court issues any order."
Our UPC team has first-hand experience of actions at the UPC and during our webinar last month, our panel of experts talked through key insights they'd gained from examining UPC decisions so far as well as their own experience of proceedings at the court. Our speakers covered the need for efficiency in the UPC, added subject matter, inventive step as well as their top tips for preparing for a UPC litigation.
The webinar recording is available on request here.
Footnotes
2. Statistics & Trends Centre | epo.org
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
