Learning never exhausts the mind
Leonardo da Vinci
Although the Unified Patent Court (UPC) has not yet commenced, the IP team at Gide is familiar with the rules and principles, which will govern the future Court and is pleased to share some thoughts and insights below.
Proposed legislation in some jurisdictions may give a patentee the (new) option to benefit from double-patenting (that is, two patents covering the same invention in the same territory). However, the benefit may be lost in the case of opting out an EP from the jurisdiction of the UPC.
For example, in Germany and France, progressing and draft legislation (respectively) propose to allow an EP which has not been opted out of the jurisdiction of the UPC to co-exist with a national patent. This raises the possibility of a patentee being able to sue either nationally or in the UPC (even after the end of the transition period).
However, this legislation provides an EP which has been opted out of the jurisdiction of the UPC will not be allowed to co-exist with a national patent covering the same invention and the national patent will be rendered ineffective. The possible consequence is that, if a patentee were to opt an EP out of the UPC and then later withdraw the opt-out, it may lose the benefit of possible concurrent national patent protection.
In the UK, however, the legislation intended to implement the UPC does not provide for the possibility of double-patenting under any circumstances and, as was the situation previously, the grant of an EP is sufficient to have an equivalent national patent revoked.
Consequently, the different rules in different jurisdictions should be carefully considered by a patentee when considering its opt-out strategy, particularly if there is any question about whether it might later wish to withdraw the opt-out. It may also affect a patentees’ patent prosecution strategy, for example, it may encourage applications for certain national patents as well as EPs which designate those countries.
There may also be consequences for those who wish to clear the way in countries affected by these rules as a national patent will only be able to be invalidated by a national court. There may, therefore, be good reasons to litigate both the national patent and the relevant EP in the national court, but this will only be an option for litigants during the transition period.
The IP team at Gide is on hand to help you when considering opt-out and litigation strategies. Please feel free to get in touch with us.
By Daniel Byrne and Julie Pailhès