Professional Service
UPC PROCEEDINGS
The Unified Patent Court (UPC) provides a new opportunity for patent holders to obtain pan European relief for patent infringement. Likewise, the UPC offers a new mechanism for central revocation of a European patent beyond the EPO’s 9-month opposition period.
Despite the UK not falling within the jurisdiction of the UPC, as European Patent Attorneys, our team have the ability to represent parties before this new court. This places us in the unique position of being able to manage both UK and UPC litigation actions, providing a co-ordinated and efficient approach to dispute resolution across the UK and EU.
Building on our wealth of experience in contentious opposition proceedings before the EPO, we are well-placed to act in connection with the wide range of actions possible before the UPC, infringement, revocation and declaration of non-infringement actions. For patent holders, conventional litigation across Europe is expensive and complex due to the need to initiate and co-ordinate separate actions across multiple jurisdictions. The UPC greatly simplifies matters, with only one action being needed for all participating EU member states, thus making enforcement of European patents significantly more affordable.
The UPC also adds to the toolkit available for those wishing to challenge the validity of granted European patents. Here, we are able to use UPC proceedings in complement with other types of proceedings, including EPO opposition proceedings and the UKIPO opinion service, in order to maximise the prospects of achieving freedom-to-operate.
Despite the UPC being a new forum for resolving patent disputes, we are well-prepared to adapt to this new regime based on our wealth of experience in contentious matters before the European Patent Office (EPO). This experience puts us in the optimal position to act in connection with the wide range of actions available before the UPC, including infringement, revocation, and declaration of non-infringement actions. Our team is accustomed to handling high-value, complex proceedings and are always looking for innovative ways to provide comprehensive and clear strategic advice.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates to UPC Proceedings.
Romania to Join the UPC
On 31 May 2024, the Romanian government deposited its instrument of ratification of the UPC Agreement with the Council of the European Union, meaning that Romania will become the 18th member of the Unitary Patent System on 1 September 2024. Thus, those validating their European patents with unitary effect are advised to request a delay to registration of their unitary patents to ensure Romania is covered.
Gaining access to documents filed in a UPC action
All decisions and orders of the UPC are published on the UPC website. Registered representatives can also see, via the Case Management System, all documents that have been filed on a specific action. Gaining access to these documents themselves such that the content can be reviewed is however more difficult and third parties wishing to gain such access must submit a reasoned request pursuant to Rule 262.1(b) of the Rules of Procedure. How such requests are currently being dealt with by the UPC is the subject of the presently discussed decision.
UPC Court of Appeal Suggests the Description is Relevant to Deciding Whether Certain Embodiments Are Excluded from the Scope of the Claims
The question of whether and to what extent the description should be used to interpret the claims of a patent is a disputed topic in patent law, with there being a need to construe the claims as they are written whilst also reading them in the context of the patent as a whole. In its first substantive decision, the UPC’s Court of Appeal suggests the description can be used to decide whether arguably impractical embodiments are excluded from the scope of the claims.
The UPC have been Quick to Issue their First Preliminary Injunction
One of the first preliminary injunctions was issued by the Unified Patent Court on 22 June 2023. The decision was made ex parte and, remarkably, on the same day as the application for an injunction was filed by the proprietor, despite the respondent’s efforts to avoid the issue of an injunction by filing a protective letter.
Today’s The Day – The UPC Has Opened!
After several years of delays, formalities, constitutional disputes, and doubts in the minds of many as to whether the European Union’s new Unified Patent Court would ever open for business, this new court has finally opened its doors and will start taking cases from today.
Daybreak at last! The UPC start date is confirmed
The implementation of the Agreement on a Unified Patent Court has been a slow process, with many unexpected hurdles and delays being encountered along the way. However, it seems the Unified Patent Court is now ready to start taking cases, and thus Germany has recently ratified the UPC Agreement, setting into stone 1 June 2023 as the date on which this long-awaited court will finally open for business.
Daybreak is on the horizon, but the sunrise is still a little way off
The start date of the European Union’s new Unified Patent Court has been delayed several times, but it was widely expected that the 1 April 2023 start date would be adhered to this time. However, in view of some technical difficulties encountered by many who are due to start using this system when it comes into effect, a decision has been taken to delay the start of the new system by a further two months.
A long night, but the sun is coming up over Europe
Those interested in the European Union’s new Unitary Patent System will know the start of this new system has been delayed several times since it was originally agreed upon by the participating EU Member States. However, this new aspect of European patent practice now seems highly likely to open for business in early 2023. Now is therefore the time for applicants of European patent applications and proprietors of European patents to familiarise themselves with the options available to them once the Unitary Patent System enters into force.
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Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
