UPC Blog Series: Part 1 – The Unified Patent Court (UPC)? Not our concern, right?

To make the best of the upcoming sunrise period starting 1 March 2023, our experts from different jurisdictions will, under this blog series, share their insights on topics that may have received less attention in the ongoing lively UPC/UP discussion.

The first part of this article concerns denial, and the excuses businesses rely on to disregard the UP/UPC reform. Given the reform’s complexity and uncertain outcome, it is unsurprising that businesses which should be interested have not always been paying attention.

By examining these ‘excuses’ below, we will determine who may safely determine that the UP/UPC reform is none of their concern, and who on the contrary, should be following its developments more closely.

Excuse 1: We Will Not Apply for Unitary Patents and therefore do not need to know about the UPC

This is probably one of the most serious UPC misunderstandings, and still a surprisingly common one.

So let us say this one more time: the Unified Patent Court is not only for Unitary Patents, but also for traditional European Patents (EP) if they have not been opted out from the jurisdiction of the UPC.

Thus, if you have traditional EPs in your portfolio, you should study the UP/UPC reform in further detail and in particular the question of opting out (which we will discuss more in this blog series).

Excuse 2: We have no patents / We Only Have National Patents

While it is true that national patents as such are not affected by the UP/UPC reform, a company that holds no patents itself or which operates a national patent portfolio cannot safely overlook the reform.

As a Unitary Patent has by its name a unitary effect in the participating countries (please consult our interactive UPC map for further details), it has been estimated that the overall number of valid patents will increase in the participating countries. This in turn will increase the risks of your business infringing a third party’s Unitary Patent when operating within the UPC area.

So, if your company operates within a field where patents are relevant, you may wish to focus on maintaining your freedom to operate and studying the basics of how UPs and EPs can be revoked.

Excuse 3: Our Business Takes Place in a Non-Participating Country

The geographic reach of the UPC is one of the most complex aspects of the reform, and it is easy to get lost in trying to figure out which countries are involved, how and when.

While EU member states Spain, Poland and Croatia and the former EU member state the United Kingdom, have not joined the UP/UPC system they are not necessarily ‘safe’ from the reach of the UPC.

For instance, if a company domiciled in France (a UPC country) infringes an EP of an Italian company in France, Italy (a UPC country) and Spain (a non-UPC country), the Italian company may bring proceedings before the UPC and claim a cross-border injunction in all three countries (all parties to the European Patent Convention). The injunction would also be enforceable in Spain under the Brussels Regulation.

Furthermore, in certain situations, the UPC may grant preliminary injunctions that are enforceable in non-UPC countries and even rule on damages arising outside the UPC area from infringements in the UPC area.

So, as long as you are operating in or close to the UPC area, it is best to study in further detail how the UPC might apply to you.

Excuse 4: Our Focus Is Licensing and Joint Ventures, Not Enforcement

Even if the focus of your daily work would not lie in litigation, but in the licensing of your (or someone else’s) patented technology or discussing how co-created inventions are treated in your joint ventures or other co-operations, there are certain basics you should know about the UP/UPC when making patent-related agreements.

For example, opting out a traditional EP from the scope of the UPC’s jurisdiction may only be done by the owner, and in the case of a co-owned patent, jointly by all co-owners. Further, if a licensee to an EP in a single designated country is entitled to enforce it in court, doing so before the UPC could have broader consequences than originally foreseen.

So, if you are licensee, licensor, or co-owner of an EP, it is advisable that you quickly clarify with your co-operation partners how you intend to deal with the UPC assuming your agreement does not set out the answer.

We hope this blog post gave you some food for thought. You will find the upcoming parts of this blog series and further information about the UP/UPC system under Bird & Bird’s UP/UPC website.