All businesses are advised to review their patenting strategies to prepare for the new system. Existing European patents and pending European patent applications will automatically fall within the jurisdiction of the UPC, unless positive steps are taken to opt them out. Of course, one option is to do nothing, leaving all such patents in the UPC system. However, this strategy is not without risk. Pinsent Masons has examined the actions businesses should take now to prepare for the UPC to mitigate the risks of competitors gaining ground, and has developed the checklist below to guide businesses in their preparations.
Conduct a patent portfolio audit and identify any co-owned patents
- Proactively review European patent portfolios and identify owners, including co-owners, and undertake any necessary checks to establish ownership now.
- Ensure patent ownership information on EPO and national registers is correct.
- Identify co-owned patents, and initiate or respond to initiated discussions with co-owners about opt-out strategies now.
In many, but not all, cases, these may be relatively straightforward steps to take, but can take some time.
Consider opt-out strategies prior to start of sunrise period on 1 March 2023
- Consider factors which may impact opt-out strategy – such as scope of protection, patent strength, type and value of the product, market share etc.
- Consider pros and cons of the new system – should valuable patents/income streams should be subject to a new but untested system, and/or should some patents be kept in the UPC to help shape the case law?
This is a challenging but critical part of the plan, namely developing a commercial strategy for your business that may shape future successes.
Consider future patenting strategies
- Consider filing divisional patent applications where there is a pending European patent application.
- Consider converting pending European patent filings to unitary patents.
- Consider more national patent filings in Europe rather than European patent filings via the EPO.
Conduct a commercial agreement audit and evaluate key opt-out and enforcement provisions
- Audit IP licences and other material IP-focused agreements.
- Initiate or respond to early conversations with counterparts to align on opt-out, prosecution and enforcement strategies and update agreements if necessary.
- Agree a mechanism for opt-out/withdrawal of opt-outs regarding any patents filings that are subject to the agreement.
- Consider who will enforce/control any litigation in the UPC.
Monitor competitor activities via UPC and EPO Registers
- Monitor the filing of European patent opt-outs from the UPC by competitors.
- Monitor the filing of divisional patent applications by competitors.
- Monitor the filings of more national applications outside of the EPO by competitors.
Consider litigation strategies now
- Consider factors which may influence where to bring or how to avoid a patent action – such as the location of allegedly infringing acts and manufacturing, market share, speed of litigation, judicial experience etc;
- For classic European patents, consider whether an action should be brought in the UPC or national courts or where your adversaries may wish to strike under the new system;
- If UPC, consider the choice of UPC division.