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CIPA webinar – A practical perspective of the UP/UPC (from an in-house position)

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IMG_8533-1The CIPA UP/UPC seminar series continued recently with “A practical perspective of the UP/UPC (from an in house perspective)” from Maja Schmitt, Head of Global Administration at DSM.

Maja presented a slightly different perspective on the unitary patent system and rather than focussing on the unitary patent/unified patent court rules or the intricacies of using the UPC’s case management system, Maja looked at the challenges of mobilising an in-house team into being ready for a system that could move from a state of “nearly ready” to “live” within the space of 6-8 months.

By way of reminder Maja noted that 16 states have deposited their instruments of ratification (for the current list of countries see our post here) with only Germany required to get the system off the ground.

Maja noted that while attorneys might focus on the strategic considerations of whether to register an opt-out there are many practical considerations to factor in, such as how do we opt-out, how do we request unitary effect or record what has been opted out? For example, an opt-out request needs to come from/be authorised from the true owner of a patent (Rule 5(a) UPC Rules of Procedure). This is assumed to be the registered owner listed on the EP or national register but this might not be the case. For cases where the true owner is not listed on the patent register then opt-out requests will need to be accompanied by an additional declaration. Working out whether the patent register reflects the true ownership position of your portfolio may not be a trivial concern and is one of the challenges of preparing for the unitary patent system.

DSM, like many companies, has IP rights that are registered in names other than the main rights holder. Determining the rights position for DSM (current register owner and true owner) had involved generating a list of EP patents and patent applications that included ownership and registered owner information. Although the registered owner is assumed to be the true owner, if this is not correct then it could form the basis of a challenge against an opt-out. Within DSM therefore the generated list of EP patent properties was allocated to each responsible attorney who were asked to check their portion of the list with respect to jointly owned IP, licensed IP, JV IP etc. The report was then regenerated and checked again and this process repeated until it was clear that all cases had been assessed.

The ability for internal docketing systems to handle the extra deadlines and workflows generated by the unitary patent and UPC was also discussed. DSM’s docketing system was apparently not ready for the UP/UPC when the capabilities of the system were first assessed but by mid 2017 the capabilities had been added to the system and a programme of internal training was started (it was noted at this point that it was important to either redo or refresh the training regularly).

Maja suggested that internal workflows would need to be adjusted to have a main date for considering opt-outs from the UPC and for requesting unitary effect for EP applications during the sunrise and transition periods. It was suggested that docketing system users should consider having additional UP/UPC tasks on publication of an EP application and on receipt of a Rule 71(3) Communication. Additionally, key review points for opt-out decisions could include: during the sunrise period, on notification of grant and whenever significant prosecution or commercial decisions are made.

When considering training of staff, support staff should received tailored support for their needs and should focus on what they need from attorneys, for their internal docketing system and for the UPC case management system. It should also be noted that it is possible to gain familiarity with the unitary patent CMS and the UPC CMS (Note that both systems confusingly use CMS to refer to their IT platform). All this training should be in support of support staff being in a position when the unitary patent system goes live:

  • how to request unitary effect;
  • how and when to pay unitary patent renewal fees;
  • how to record unitary patent data in the internal docketing system;
  • how to check/update the UP Patent Register;
  • how to check/determine the post grant country coverage (e.g. unitary patent jurisdiction versus EP coverage);
  • how to request and, how to withdraw a request for, an opt-out.

When considering the awareness of attorneys the following areas need to be covered:

  • Unitary patents require a single claim set for all territories
  • Opt-out requests are for all jurisdictions (there is no country selection)
  • FTO and Infringement/validity opinions will need to take account of UPC and national jurisdictions
  • There is a single renewal fee for a unitary patent which equates to validation in around 4 countries
  • It is not possible to convert a unitary patent into national patents
  • It is not possible to have double protection via both a unitary patent and a classically validated EP patent for a member state that is within the UP system;
  • However, some countries will allow double protection via a unitary patent and national patent
  • Divisional applications can be treated separately to the parent case (e.g. different validation options; different opt-out decisions);
  • There are a number of EPC countries that are outside of the unitary patent system either because they are not EU member states or because they are not taking part (Spain, Poland, Croatia)

Other factors to consider are:

  • Talking to counterparts for jointly owned patents/patent applications
  • Identifying cases where the owners can no longer be tracked
  • How to deal with cases where there is a difference of opinion as to how to proceed (e.g. joint owners disagreeing on opt-out position)

For business awareness it is important to keep the message simple and not to smother business colleagues in too much information. Check lists/”cheat sheets” might be helpful in focussing attention on the issues that matter. Additionally, it is important to work out what the mindset of a business is – do they fear a central attack on their patents by others or are they interested in the possibility of centrally attacking others? It will also be important to acknowledge that the Unified Patent Court will be an untried system and that jurisdiction will still be fragmented to a certain degree (e.g. with countries that will stay outside the system like Spain and also countries that joined after the system went live). For internal departments it might be possible to set a company default position (e.g. unless we hear to the contrary we won’t opt-out).

The seminar ended with a brief look at matters such as UPC representation and the requirements of opt-out. The final slide put up a best-guess timeline for implementation of the unitary patent system. It is IPcopy’s understanding that we are unlikely to see any developments in the German court case until later this year. However, if the decision in Germany allows the ratification process to be restarted then we may move relatively quickly from the current state of limbo to an active unitary patent and unified patent court system within a period of less than a year. In light of the various issues raised above and the time it might take to get internal systems in place such a period may turn out to be challenging and so early preparation is advised.

Mark Richardson 1 August 2018

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