London Brussels Hong Kong Beijing Countdown to the Unitary Patent system in Europe Susie Middlemiss 8 June 2015

1 National patent application National patent Bundle of national European patents Overview of the unitary patent No election1 month election European patent application Non European Patent Convention countries European Patent Convention countries Transitional period UPC National courts Single unitary patent Opt out

2 Unified Patent Court Central Division English/French/German Local Divisions ≤4 per country Local Language Regional Divisions 2 or more countries Local Language Court of First Instance ParisMunich London Munich London Court of Appeal – Luxembourg

3 Status of ratification ????

4 Progress and ratification Official Looking possible not 2015 end 2016/early 2017

5 Recent Developments the Spanish Challenge: failed 5 May 2015 the Belgian Challenge: dropped Italy set to join the Unitary Patent Judges in training IT system in development Rules of Procedure

6 Transitional regime Want to opt out? Existing UPC case? National case No opt out Patentees Choice UPC Transitional Period 7 (up to 14) years Opt back in if no national case Post transitional (where no opt out) No Yes

7 Transitional regime ● Unitary Patent:  UPC exclusive jurisdiction ● European Patent:  UPC exclusive jurisdiction + transitional regime 7-14 years  Opt out for individual EPs (for life of the patent)  Enforcement in either national courts or UPC if no opt-out

8 Issues and opportunities of the UP and UPC Pros Central application Broad territorial coverage Choice of forum Cross border relief Reduce multi-jurisdictional litigation Ability to opt out for 7 years and monitor Bifurcation? – pro patentee to split validity and infringement Cons Central revocation Cost may outweigh benefit Courts untested/forum shopping All or nothing Filing and litigation costs unknown Continuing uncertainty Unclear – bad for defendant

9 Strategy 1. What do I need to do now? 2. Do I opt out of the UPC? 3. How do I opt out?

10 Cost? Court FeesRenewal fees Opt out € Recovery

11 Opting out: considerations ● All proprietors/applicants must lodge the Application ● Opt-out for all Contracting Member States: all or nothing ● Fee of €80 ● Position of exclusive licencees ● Sunrise provision

12 Opting out ProsCons No risk of central attackLimited to national enforcement Takes EP out of UPC jurisdiction altogether – even post transitional period National action blocks opt back Fee for opting out – € 80 Can opt back in Fee for opting in – € 80 Monitor development of UPCNo influence on UPC

13 Action points ● Review existing portfolios now  Identify commercially valuable patents  Identify co-owned patents  Assess costs ● Consider position if acquiring EP in one jurisdiction – will co-owners agree to opt out? ● Exclusive licences (current and future) – position on opt out? ● Be ready for sunrise period

14 Contact Susie Middlemiss T +44 (0) E