Unitary Patent Court: Strategising in advance to maximise IP asset protection London IP Summit – October 2015

Forum shopping and strategies 2 1 3 4 5 6 7 Forum shopping and strategies

BIGGER MARKET THAN THE U.S. INJUNCTION EASIER TO OBTAIN UPC: the forum of choice for future patent litigation? 2 1 3 4 5 6 7 BIGGER MARKET THAN THE U.S. CHEAPER LITIGATION US court UPC INJUNCTION EASIER TO OBTAIN FASTER DECISIONS

Or not? OPT-OUT 2 1 3 4 5 6 7 By declaration By action? Application to opt-out with the registry Payment of the fee Effective from the date of entry into the registry not from the date of receipt Art. 83 (1) UPCA Consequences? OPT-OUT By declaration By action? During a transitional period of 7 years (…) an action for infringement or for revocation of a EP patent (…) may still be brought before national courts.

Why forum shop? 2 1 3 4 5 6 7 An entirely new system, with procedural rules that are: A merger of different European legal cultures; and Permitting numerous interpretations (i.e. ambiguous!) Panels (including judge rapporteur) that could be: Weighted towards a particular national culture; or Resident in a division for long enough to develop a local approach Patentees will have a wide choice of local/regional divisions in which to bring infringement cases, or even avoid the UPC Alleged infringers also have a choice of approach, particularly during the transitional period

Jurisdiction: escaping or complementing the UPC 2 1 3 4 5 6 7 EPO Oppositions Competition law Other fora than the UPC may be sought by one of the parties National patent proceedings (incl. compulsory license) ADR National proceedings on issues outside the jurisdiction of the UPC Torpedos

Non-practising entities and the UPC 2 1 3 4 5 6 7 Non-practising entities and the UPC

The UPC could be an attractive playing field 2 1 3 4 5 6 7 Preliminary injunctions also possible Large market Emergence of an “Eastern District of Europe”? Possible injunction gap? Quasi-automatic permanent injunctions C Increased NPE litigation?

Litigation costs remain the main determinant 2 1 3 4 5 6 7 Limited fixed fees (11.000 € for infringement action, 20.000 € for revocation action) Value-based fees much more significant (up to 220.000 €) Only for infringement action (counterclaim for revocation capped at 20.000 €) Court fees Much lower than in the US => Lower investment for NPEs to bring action No incentive for defendants to settle for lower amount than the cost of defending the action (≠ US) Lawyers’ fees Under some proposals, SMEs exempted – NPEs could qualify as SMEs Recovery of costs possible (≠ US) Sliding scale from 50.000 € (value of action < 250.000 €) to 3.000.000 € (value of action > 50.000.000 €) Security for costs possible Recovery of costs

2 1 3 4 5 6 7 Opt-in or opt-out?

No one-size-fits-all strategy 2 1 3 4 5 6 7 How strong is your portfolio (compared to your competitors)? What do you use your patents for? Differentiation, dissuasion, royalties… ? A number of factors, specific to each business, will determine the opt-in / opt-out strategy How many patents protect your key products? Those of your competitors? What type of judicial win do you need? How strong are your budget constraints? Are you worried that the UPC system will be tailored for the needs of others?

Presenting today David Por Partner - Paris Tel +33 1 40 06 55 46 Fax +33 1 40 06 54 54 david.por@allenovery.com

Questions? These are presentation slides only. The information within these slides does not constitute definitive advice and should not be used as the basis for giving definitive advice without checking the primary sources. Allen & Overy means Allen & Overy LLP and/or its affiliated undertakings. The term partner is used to refer to a member of Allen & Overy LLP or an employee or consultant with equivalent standing and qualifications or an individual with equivalent status in one of Allen & Overy LLP’s affiliated undertakings.