A new patent system for the European Union: EPUE and UPC

General information about the EPUE and the UPC

A new patent system for the European Union (‘EU’) based on the European Patent with Unitary Effect (‘EPUE’) and the Unified Patent Court (‘UPC’) is taking off soon.

The present system provides that enforcement and revocation of the national fractions of a conventional European patent operate only under the jurisdiction of the respective national Courts, with the exception of a centralized opposition procedure before EPO, which can be initiated only within the 9-month period following the grant of the patent.
The present system can be burdensome and expensive, requiring separate legal procedings in each country of interest, creating uncertainty in the event national Courts issue inconsistent decisions. The new system will eliminate these problems when applicants elect to seek patent protection through an EPUE.

The EPUE will be a unitary right protecting a given invention throughout the territory of the participating member states.

The UPC will be a completely new Court in which it will be possible for patent owners to use a single procedure to enforce either an EPUE in the EU member states that have ratified the UPC agreement, or a conventional European Patent in those same states in which the patent was validated.

Likewise, the UPC will be competent to preside over claims seeking revocation or a declaration of non-infringement, again in a single procedure. Thus, the high costs and risk of inconsistent decisions associated with the present system will be avoided.
The UPC will be the only competent forum for questions regarding the enforcement or revocation of an EPUE. For conventional European patents, the patent owner may opt-out of the UPC and elect to have disputes relating to the enforcement or revocation decided by national Courts during a transitional period of seven years (with a possible extension of a further seven years). The UPC will have no jurisdiction over questions of enforcement and revocation of national patents, for which national Courts will continue to have exclusive competence.
The new system will not enter into force until at least 2017, following ratification of the UPC agreement by at least 13 EU Member States, which must include all three of France, Germany and the United Kingdom. It will initially apply only in those EU member states that have ratified the UPC agreement. Following its entry into force, other member states will be includedin the new system once they too ratify the UPC agreement.

Why Jacobacci

The Jacobacci Group combines the legal expertise of the lawyers of the law firm Jacobacci & Associati and the technical expertise of the patent attorneys of the patent and trademark agency Jacobacci & Partners.

The expertise of the Jacobacci Group is evidenced by the fact that several Jacobacci & Partners patent attorneys satisfied the requirements for becoming technical judges of the UPC on the basis of their previous experience alone. They were thus exempt from the requirement of further training to become a technical judge.
The Jacobacci Group has offices in four European countries, including Italy and France, i.e. in 2 of the 4 most populous EU member states. The firm is therefore particularly well-suited for the needs of litigating parties before any local, regional and central division and the Court of Appeal of the UPC, as well as during pre-judicial and extra-judicial procedures.

By way of example, the Jacobacci Group can:

  • strategically evaluate the strengths and weaknesses of a patent portfolio to select the most appropriate patent right(s) to enforce
  • select the most suitable division of the UPC for a particular matter
  • coordinate litigation before the UPC with possible parallel litigation in non-participating EU or extra-EU countries
  • enhance the effectiveness of an action before the UPC with customs seizure procedures
  • manage complex validity and infringement issues for a patentee or a party accused of infringement
  • conduct mock oral proceedings with the client in preparation for the actual proceedings
  • conduct searches to find national prior rights for challenging a portion of an EPUE
  • argue anticipation of a patent, when the claims, for example, are only partially entitled to the priority of an independently published patent application
  • utilize SPCs for extending the coverage of pharmaceutical and phyto-pharmaceutical patents
  • negotiate extra-judicial settlements

Download the Brochure A new patent system for the European Union: Introducing the EPUE and the UPC.

For further information, please contact: agerbino@jacobacci.com

 

 

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