Although the new system has not yet entered into effect, the final consolidated version of the Rules of Procedure was published at the end of August 2022. This means that stake holders can and should start developing strategies now. This should include:
Drafting and filing divisionals of European patent applications: According to the EPC, EP divisionals can be filed up to grant (to be precise: until the day before the mention of the grant of the parent application in the European Patent Bulletin). This allows for having both a Unitary Patent and a traditional European patent for almost the same technology – subject to certain double patenting limitations. Patentees should evaluate their pending European patent applications in order to decide whether a divisional should be filed in order to enhance future enforcement options. A Unitary Patent can only be obtained once the system goes live, so an application that is intended for unitary effect should be kept pending until that moment.
The PCT national route will probably be re-opened in the countries where it is currently blocked, so this should also be taken into consideration.
Patentees may want to consider filing national patent applications as well as or instead of European patent applications in order in effect to opt those national patents out of the jurisdiction of the UPC altogether
Patentees may want to exclude some already granted European patents from UPC jurisdiction by filing opt-outs, thereby preventing a central attack on validity. There will be a Sunrise Period – as of October 2022, the Sunrise Opt-out Register (part of the “Case Management System”) will open on January 1st 2023. Evaluation of existing portfolios therefore will be required. This is not a simple task, especially for large portfolios. It requires developing a strategy, which may differ per sector and even per company, followed by a subsequent portfolio evaluation, with special attention paid to the strong patents protecting a company’s core technology. Bird & Bird can work closely with clients in providing the necessary support based on in-depth knowledge of the new system and industry sectors as well as the client’s own business.
A patent filing and litigation strategy should also take into account litigation in national courts, either as an alternative to the UPC or in parallel to it, including in countries not covered by the UPC such as the UK. It is expected that the UPC will take account of the reasoned judgments from the Patents Courts in England.
Licensees may want patentees to opt out, but existing licences will contain no such provisions. Licensees who want to prevent a central attack on the patent under which they are licensed should look at this now and discuss the position with their licensors.
Exclusive licensees will obtain the authority to enforce a patent without consent from the patentee, unless provided otherwise in the licence. Patentees should therefore check the terms of their existing exclusive licence agreements.
On the other hand, non-exclusive licensees will not have this option unless it is expressly provided for in the licence, so they should also check the terms of their licences.
If you are on the defensive side, the language of litigation may be a local language, but may often be changed to the language of the patent. This should be taken into consideration by patent holders when choosing the language for a European patent application.