General considerations for businesses
Businesses considering the implications of the new unitary patent system can start by asking themselves the following questions:
- What patent rights do you currently have and what applications are planned for the future? Businesses need to consider now how the UPC will affect their patent filing strategy, and whether existing European patents should be opted out of the UPC.
- Do you want to be able to enforce your patent rights as widely as possible? The UPC will provide a single forum for the enforcement of patent rights across a large part of the EU.
- How valuable is any given patent to the business? Unitary patents, and European patents which have not been opted out, can potentially be invalidated in all member states participating in the unitary patent system through a single revocation action. Do you have a ‘crown jewels’ patent, loss of which across a large part of Europe might have a major impact on the business?
- Would a patent enforceable in the UPC provide better leverage against competitors?
- Do you license your patents to others in Europe? If so, is the risk of revocation a real concern in terms of direct revenue?
- Are you happy to risk being ‘locked out’ of the UPC if national proceedings are started against the patent?
We can help you weigh up the benefits and risks of the unitary patent system and work with you to make the new patent system in Europe work for your business. Contact our team of UPC experts.
Further information is also available in our article on Making the unitary patent system work for your business.
Considerations following the UK’s vote to leave the European Union
Following the UK’s vote to leave the European Union, businesses will be assessing what impact Brexit may have on day-to-day operations and long term strategy. In terms of intellectual property rights in general, businesses should be seeking advice on how best to protect their portfolio going forward.
In relation to patents, at present the UK is a contracting party to the European Patent Convention and will remain so after it leaves the European Union. Consequently, in terms of patent registration and enforcement in the UK as currently practised, an exit from the European Union will have little effect. Patent protection for inventions in the UK may be obtained by either validating European patents upon grant to have effect in the UK, or by filing nationally through the UKIPO or under the Patent Cooperation Treaty.
With respect to the unitary patent system, the UK’s position in relation to its future participation is unclear. Whilst the UK remains a member state of the European Union, its ratification of the UPC Agreement is essential if the unitary patent system is to go ahead (under the current terms, the UK must ratify the UPC Agreement, along with France and Germany). It now seems likely that this will take place before the UK’s exit from the European Union.
The question will then be whether the UK can continue to participate after exit from the European Union. This will probably depend upon the terms of the Brexit deal agreed between the UK and the remaining member states of the European Union. It may be that the UK will remain part of the unitary patent system even after it leaves the European Union, although this will require significant changes to, and re-negotiation of, the current position. It is legally possible, but will require goodwill from other member states and amendments to the UPC Agreement.
Businesses seeking present and future patent protection throughout Europe would be wise to seek specialist advice in relation to their patent strategy, and to “keep an ear to the ground” for future developments.
For more information, including a run-down of the perspective from France and Germany, please watch our webinar “
Unitary patents – Brexit update
” and see our publication “
Brexit: all change for the EU patent landscape
”. Also see our
Unitary patent timeline
It is also unclear how, or the extent to which, existing commercial agreements will be protected following the UK’s exit from the European Union. Current and prospective IP licence agreements and other contracts may need to be re-visited in light of the forthcoming European Union exit. Businesses should pay particular attention to:
- jurisdictions within which rights are granted and whether or not these would remain valid and enforceable following Brexit;
- methods of terminating the contracts where suitable rights are no longer valid in those jurisdictions;
- governing law, to decide if agreements should be governed by English law or the law of another country;
- jurisdiction provisions, to decide the best forum for possible future litigation;
- arbitration clauses and, if agreements already make provision for the use of the UPC Mediation and Arbitration Centre (Article 52.2 UPC Agreement), then they should consider changing this to allow for an alternative arbitration regime.