In preparation for the launch of the unitary patent and Unified Patent Court on 1 June, Keltie has put together a team of experts to monitor developments and support clients with their preparations. We introduce the team and ask them about the new system.
Mark Richardson is a Partner and part of the IT, Telecoms and Electronics team at Keltie. He has been following the developments leading to the launch of the unitary patent for many years and has discussed them frequently on social media and the IPcopy blog.
Michael Moore is a Partner at Keltie with a background in Chemistry, Medicinal Chemistry, Biochemistry, Molecular Biology and Cellular Biology. He was formerly Senior Scientist and Internal Patent Coordinator at a successful gene-therapy start-up. His patent practice has a particular focus on contentious matters, such as EPO Opposition and Appeal proceedings.
Gemma Christie is a Director, specialising in the field of Mechanical and Chemical Engineering. Before becoming a Patent Attorney, she worked as an engineer in the automotive, aerospace and oil sectors. Gemma also helps to promote the IP profession to underrepresented groups.
Joeri Beetz is a Director and a UK, Dutch and European Patent Attorney with a Physics background. He previously worked in-house and has handled many Opposition and Appeal cases at the EPO. He is known for his claim-drafting courses and as a tutor for the C paper of the EQE.
Mark: The unitary patent offers some big opportunities to save on renewal fees, maybe saving as much as 20% compared to European patents, depending on how many countries you validate in. Another benefit is that there will be a transitional period of at least six years during which all unitary patents will have to be translated into English (if proceedings at the EPO weren’t in English). Additionally, within the UPC itself, many local and regional divisions will use English as the language of proceedings. All this is an advantage for users in English-speaking countries such as the UK and US.
Michael: It is a massive opportunity for clients that don’t have huge budgets for IP because they can achieve greater coverage across Europe, but it also brings the potential for added conflict. For smaller clients in particular, it’s an additional option that could be cost effective, and for some clients it is going to be a strong sales point to get a unitary patent and not have to go through validations in each country.
Gemma: The biggest opportunity in respect of the UPC is also the biggest risk, in that you can get a single decision from the UPC which covers all the participating member states. That removes the uncertainly of different decisions, jurisdictions and timelines, which is great – as long as the decision goes in your favour.
Joeri: At the UPC, central invalidation and infringement procedures should give early certainty for patent proprietors and third parties. The Rules of Procedure also require the judges to give quick rulings. They will be applying the same patent law as national courts, so the differences won’t be huge, but it will probably be more efficient. And if you do get into an invalidation procedure, you can use your current patent attorney rather than having to instruct another person in a different jurisdiction, with different languages, procedures and extra costs, so that is a big advantage for users.
Michael: I think most people are saying they want to opt out their EPs at the moment, even though it’s a little bit of extra expense and work to do the opt-out. We expect the UPC to be reasonably patent friendly, but there is still a lot of uncertainty, and we already have to deal with big variations in decisions at the EPO. National courts may be more reliable in the short term.
Joeri: The main reason to opt out is if you’re afraid of central revocation. If you’re not opted out, people can still try to invalidate nationally, but central revocation is the one thing you can prevent. If you have patents that are borderline inventive, central revocation is a big risk – but with national courts you may get some decisions in your favour.
Another point is that I would expect a lot of appeals at the UPC in the early years because there’s no established case law and there will be lots of questions about procedure – including whether the court is even legal: I’m sure that will be raised in an early case!
Mark: My biggest concern at the moment is the IT platform for opt outs and for the court. There is still a lack of clarity about how some of the aspects of the IT system should operate and the test phase has now been extended so it actually overlaps with the expected start of the sunrise period! Hopefully, the platform will settle down quickly.
The other big challenge is clearly conveying the basic information about the unitary patent system to clients and users without going too deep down a strategy rabbit hole. Companies need to communicate internally and with their advisers to decide what to do at a high level so they are ready for this big change in the European patent landscape.
Gemma: Smaller clients often just want to be told what to do by their advisers, but unfortunately that’s not always possible or in their best interests. You have to say: here are the options, our role is to help you understand them and make the right choice for your business. The unitary patent and the opt outs add another layer of complexity to decision making, at least in the short term.
Joeri: I think there’s some big questions about the role of the part-time technical judges on the Court. In some cases these will be the same people we see representing opposing parties in EPO oppositions and it’s not yet clear how it will work. There are some very good people on the list of technical judges but they will all be specialists in their own technical area so they may have preconceptions based on that – and yet their decisions will become precedents and may affect their own clients.
Michael: Where you have technically qualified people, they can often have a strong view on what the right answer is before the arguments are laid out, and in the UPC the judges will be technically qualified. That contrasts with the legal system in the UK, for example, where the parties provide the technical experts but the non-technical judge is making the decision based on the technical presentations. That’s probably one of my biggest concerns about the new system.
Gemma: Right now the main decision to make is whether to opt out. You need to understand the risk of central revocation and make a decision about whether or not that presents a risk to your business.
Mark: Looking ahead, beyond opt-outs, it will be important to understand how the unitary patent and UPC affect every part of your business, such as licence and commercial agreements and business processes – even if you’re not planning to use it.
Joeri: A big thing to watch is the volume of cases – both applications for unitary patents and cases before the UPC. I expect the unitary patent to be quite popular; a lot of applicants will be interested in the wide coverage, and it’s also simpler because you no longer have to make decisions about whether to keep or prune different countries.
Gemma: It’s certainly true that a lot of management time gets spent, particularly in big companies, in patent committee meetings making validation and renewal decisions. With a unitary patent that time can be saved as there is only one decision to make. And of course it will become even more attractive as more countries join.
Gemma: I think it will be interesting to see how it plays out from a legal point of view in the early days, and I look forward to having discussions with colleagues and clients alike about the different strategies available, and what’s best for a particular business or set of circumstances.
Mark: It’s exciting to see something completely new and how it will develop. The UPC judges are not bound by what’s gone before and they all bring different perspectives from their national systems. They will be constantly breaking new ground.
Joeri: I’m also interested in how it will impact the profession. I wonder if we’re moving towards a US-style system where patent litigators and patent practitioners are much closer and even in some cases the same people. I expect European Patent Attorneys will become much more involved in litigation.
Michael: For those of us who do a lot of oppositions and appeals at the EPO, it will be fascinating to be closer to the litigation and to see how the decisions develop. I expect we’ll be working very closely with solicitors and barristers to help clients achieve success, and of course EPO and national proceedings will continue to be very important too.
Mark: I think between us we’re fairly well plugged-in to the new system and we’re available to help clients in any way they need. If there’s any confusion or uncertainty, they just need to ask and we will find someone who can help. The main message is: Don’t worry about it!