IP Protection for
Next Season’s Growth
Unified Patent Court
DR. EUGEN POPP LL.M.
November 27, 2014
IP Protection for
Next Season’s Growth
Unified Patent Court
 1. Present Status

 2.Economic Effects
 3.Stratetic Cosiderations
 4.Impact on Patent Attorneys
 5.Impact on Claimants and Defendants
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
 The UPC-Agreement (UPCA) was signed on 19 Feb. 2013 by 25 EU-Member States
 (except Spain and Poland;Croatia was at that time not a EU Member State);
 The UPC will have a Central Division in Paris with branch sections in London (human
necessities;drugs) and Munich (mechanical engineering) and Local/Regional Divisions.
 Three Committees have to be constituted „to ensure effective operation and
implementation“ of the UPCA,namely the
 - Adminstrative Committee
 - Budget Committee
 - Advisory Committee.
 For the preparation of the start of the UPC, a
 - Preparatory Committee (PreCom)
 was established enabling entry into force when the required number of ratifications is
reached.
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
 Further, a
 -Select Committee
 has been established within the European Patent Office (EPO) taking care of the
administrative duties where the EPO is in charge.
The Preparatory Committe (PreCom) will exist until the Court is established.
There are five major work streams established within the Preparatory Committee:
-Legal framework
-Financial aspects
-IT facilities
-Human resources
-Training.
The status of this work can be monitored on the webpage of the PreCom.
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
The updated Roadmap of the Preparatory Committee (PreCom) of the Unified
Patent Court dated September 2014 reflects the aim that the Court is to be ready for
operation by end of 2015, under the condition that by then 13 EU Member States will
have ratified the Unified Patent Court Agreement (UPCA) , incl. DE, GB and FR.
Status of Ratification:
Austria
Aug. 6, 2013
Belgium
June 6, 2014
Denmark June20,2014
France
March 14,2014
Sweden
June 5,2014
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
Overall Summary of work completed 2013/14:
-PreCom received an expression of interest from about 1300 candidate judges ( both for legally
and technically qualified judges) and organized a pre-selction process;
-PreCom set out the basic principles for the framework for the training of candidate judges; 25
candidate judges from „non-patent“ member states have been invited for training,
-Acc. to a first estimation about 70 1st-instance judges will be needed for the start, most of
them part time;
-PreCom opened the Training Centre for the Unified Patent Court in Budapest in March 2014;
-PreCom published the 16th and 17th draft of the Rules of Procedure (RoP) for the Unified
Patent Court;
-PreCom commenced appointment of specialists in IT procurement to compile the necessary
specification for a call for tender for the UPC‘s future electronic filing and case management;
the first version of a UPC e-filing/case management system prototype has been made available
in October under http://prototype.unified-patent-court.org/;
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
The IT-prototype can be accessed using the aforementioned link, and testers can supply
feedback on any aspect of their experience using the „BugHerd“ feedback application on
the right-hand toolbar.
-PreCom agreed and circulated a recommendation for minimum specification for facilities
arrangements;
-PreCom and Member States agreed Croatia as observer to the Preparatory Committee;
-PreCom and Member States announced the first Regional Division of the Unified Patent
Court between
-Estonia,
-Latvia,
-Lithuania, and
-Sweden;
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
-Initiated an early discussion on the arrangements for the transition from the preparatory
phase to the operational phase of the new Court. This will be discaussed throughout
2015;
-Established an Expert Panel to advise the Chairman of the Preparatory Committee and
the working group co-ordinators on developing strategies on the UPC.
-Dr. Christof Keussen and Dr. Eugen Popp are members of this Expert Panel, which had
its first meeting in London on Sept. 26, 2014. The next meeting will be in February 2015.
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
Status of the different Working Groups:
a) Legal framework (coordinator: Mr. Johannes Karcher-Germany)
End of November 2014: Public hearing concerning the Rules of Procedure on the
basis of the 17th draft rules;
a1) May 2015: Agreement on Rules of Procedure in the Preparatory Committee
a2) Court Fees and recoverable costs: A scale of recoverable costs ( fixed fee and value
based fee above a defined ceiling of the fixed fee) shall be dicussed in the beginning
of 2015 and adopted by mid of 2015;
a3) Rules on the Litigation Certificate for Patent Attorneys are to be finalized early 2015
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IP Protection for
Next Season’s Growth
Unified Patent Court-Present Status
b) Financial aspects (coordinator: mr. Jean F. Magana- France)
b1) Implementation of the budget, internal control and audit procedures are to be fina-
lized by end of 2014;
b2) Pension, social security and salary schemes: Draft is expected to be finalized by
March 2015;
b3) Forecast for the operational costs for the first 7 years of operation, incl. the
necessary Court fees: Consultation planned in spring 2015.
c) IT (coordinator: Mr. Neil Feinson (United Kingdom)
The procurement process has already started and shall be finalized during the last
quarter of 2015.
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IP Protection for
Next Season’s Growth
Unified Patent Court-Economic Effects
Patent Attorneys‘ Mantra:
What is good for inventors and industry, is good for the profession!
For more than 50 years industry, in particular SME-industry has emphazised that a
community or unified patent system is needed, in order to
- reduce the costs
- increase efficiency
- increase certainty
- decrease complexity.
 Correspondingly, the majority of the profession supported the establishment of a
European Patent with Unitary Effect
and
Unified Patent Court (UPC)
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IP Protection for
Next Season’s Growth
Unified Patent Court-Economic Effects
 The question is what have we got, and what has to be considered ?
 The UPC will definitely have the following benefits:
 Harmonized jurisprudence as regards the interpretation of substantive patent law in respect
to scope of protection and validity (guaranteed by single Court of Appeal
Cost savings due to single proceedings for the territory of the participating Member States
 Cost savings and high efficiency due to only one advocate or one team of advocates on
each side
 Cost reduction through increased competiton among Patent Attorneys and Lawyers
 Fast decisions due to strict regime of timelimits, and in particular short timelimits
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IP Protection for
Next Season’s Growth
Unified Patent Court-Economic Effects
The UPC may have the following drawbacks:
 Risk of all or nothing!
 This applies both to infringement and validity
 Remark: The risk of all or nothing can only be avoided by opting-out pursuent to
Art. 83(3) UPCA
Art. 83(1) UPCA, which allows plaintiff to start infringement action or
invalidity action before a national court, is no escape, because counteraction can be started before UPC ,and national court proceedings may be
governed by UPCA
More complex system within Europe, since both national patent law and national Rules
of Procedure, and UPCA and UPC-Rules of Procedure have to be considered
All the above and further considerations have to be made in view of strength
and value of each patent/patent application
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IP Protection for
Next Season’s Growth
Strategic Considerations:
Crown
Jewel?
no
European Patents granted before enforcement of UPCA
Strong
Patent?
yes
no
yes
National Court
(Opt-Out)
Reduce Vulnerability
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Unified Patent
Court
Central Enforcement
IP Protection for
Next Season’s Growth
Strategic Considerations:
Crown
Jewel?
yes
Strong
Patent?
no
yes
European patents granted after enforcement of UPCA
Costs
decisive
?
2
3
yes
Unitary Patent
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no
yes
>x
Validations?
1 Reduce Vulnerability
2 Central Enforcement
3 Saves Annual Fees
4 Without ES and IT
x = number of validations,
where costs for unitary patent same as
for classical EP
1
4
no
Validated EP
(with Opt-Out)
IP Protection for
Next Season’s Growth
Unified Patent Court-Economic Effects
No Pain
No Gain !
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IP Protection for
Next Season’s Growth
Unitary Patent Court-Impact on Patent Attorneys
PAINS
 Less validation work, incl. administrative and translation work
 Less cross border litigation work within Europe
 Less cross border legal advisory work, since unitary should be unitary!
 More European-wide competition with respect to litigation
GAINS
 Additional litigation competence all over Europe, and correspondingly expanded business
 Nullity actions beside or instead of oppositions (two options for central attack)
 More sophisticated legal and strategic advisory work ( national vs. unitary )
 National patents/utility models vs. classic European patents vs. unitary patents
 Field of competence increased, which cannot easily be grazed down by service providers
 European-wide awareness of patents, and corresponding business
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IP Protection for
Next Season’s Growth
Unitary Patent Court-Impact on Claimants and Defendants
Summary of pro‘s and con‘s of switch to UPC as result of a survey made by EUROPE ECONOMICS
Gains for Claimants:
Pains for Claimants:
Smallest gains were expected to arise
from cost-saving and effectiveness
Smallest expected pains from risk of
injunction gap due to bifurcation
Largest gains expected to arise from
simplicity and speed of decision-making
Largest expected pains were those
associated with lack of familiarity with
the procedures of the new system and
about costs
Gains for Defendants:
Smallest gains expected to arise from
cost savings
Largest gains expected to arise from
simplicity
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Pains for the Defendants:
Smallest pains from inconvenience and
complexity
Largest pains from uncertainty and from risk of
third-party obtaining an injunction before
rulings on validity
IP Protection for
Next Season’s Growth
Thank you for your Attention!
CONTACT
Tel. +49(0)89-2121860, Fax +49(0)89-21218670, [email protected]