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

2. Forum shopping and strategies2 1 3 4 5 6 7
Forum shopping and strategies

3. 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

4. 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.

5. 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

6. Jurisdiction: escaping or complementing the UPC2 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

7. Non-practising entities and the UPC2 1 3 4 5 6 7
Non-practising entities and the UPC

8. The UPC could be an attractive playing field2 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?

9. Litigation costs remain the main determinant2 1 3 4 5 6 7
Limited fixed fees ( € for infringement action, € for revocation action)
Value-based fees much more significant (up to €)
Only for infringement action (counterclaim for revocation capped at €)
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 € (value of action < €) to € (value of action > €)
Security for costs possible
Recovery of costs

10. 2 1 3 4 5 6 7
Opt-in or opt-out?

11. No one-size-fits-all strategy2 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?

12. Presenting today David Por Partner - Paris Tel +33 1 40 06 55 46
Fax

13. 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.