“UPC Land in Sight – Three (3) Important Facts, Five (5) Myths, and Ten (10) Potential Pitfalls to Remember”, Talk Before The New York City Chapter Of The International Intellectual Property Society (IIPS) On 03.02.2023
Great honor again to give a talk before the New York antenna of the International Intellectual Property Society (IIPS).
These are the three most important takeaways:
- Forget about opt-out. UPC/UP is a no-brainer
- You get five times the bang for half of the litigation costs, as compared with the UK
- UPC Land is the only big patent jurisdiction with swift interim/preliminary injunctions available
Below is a video recording of my talk.
You can download my slides from here IIPS talk 01 2023 UPC land 210223 or from SlideShare (click here).
Outline of my talk
02:00 About the Talk
04:40 About Martin Schweiger
06:30 Demographic data of UPC Land
08:26 Economic data of UPC Land
10:15 UPC Land States map
11:15 Yes, you can have up to three (3) parallel patents in one and the same UPC Land country, for an identical subject matter
12:30 Sunrise Period Starts March 1, 2023 • Opt-out, request a delay in issuing the publication of the mention of grant of a European patent, request early unitary effect
13:40 English language proceedings available • technically trained judges of German, Dutch, and Nordic origin • Selection of court venue – UPC Locations Map
15:40 UPC Interim/Preliminary Injunctions are available, different from the US and China. All UPC decisions can be swiftly asserted in the entire UPC land, different from the EU.
17:20 UPC provides Mixed “Common/Continental Law”- style litigation, combining infringement and invalidity, but avoiding lengthy trial days in court (different from China and the US)
20:16 Unified material case law • Novelty • Inventiveness (inventiveness discussions only for elements that come with a technical advantage) • Equivalence (standpoint: at the time of the earliest priority date) • Priority (only for matters that have been disclosed as such) • Added subject matter • Lack of enablement (can you make it with what is described?) • Sufficiency of disclosure (does it work at all?) • Selection inventions
26:25 UPC Good to know: Calculation of Damages Art. 68 (2) UPCA
28:10 UPC Good to know: Expert Evidence UPC, R. 181 RoP
29:14 UPC Good to Know: prepare for Litigate-Grade Patents • Convert US-style patent claims to EP standard
32:50 Conversion of US-Style to UP/EP-Style before filing and file in parallel: a) a US patent application and b) a PCT Application in order to avoid adverse consequences from the EP adaptations to the scope of protection of a later granted US patent
34:14 UPC: Forget Opt-Out, Unless You do Not Want Swift Litigation. Crappy patents should not appear before the UPC, unless in bulk
36:28 SPRINT Acceleration at EPO Get a UP/EP within 1 year of entering PCT regional phase at EPO
37:24 Areas that will soon get clarification • EP and UP for identical subject matters in one and the same country? • Can non-UPC-Land countries allow their national patents to be litigated in the UPC? And can the UPC decision later be enforced in that non-UPC-Land country? • What happens if a UPC-Land country leaves the EU?
39:20 FAQ: Is the UK in the UPC?
40:38 UPC Good to know: Yes, despite the UK not being part of UPC Land, the UK-EP patent attorneys can plead before the UPC … … and so can the TK-EP patent attorneys from Turkey/Türkye, and all other European Patent attorneys that have additional legal qualifications
42:08 UPC land in short words: Five times the bang for half of the litigation costs, as compared with the UK
42:20 Article: “Perfect Confusion. What “European” Means In Intellectual Property.”
43:49 Q&A Session: How to designate UPC Land and non-UPC-land countries in one and the same EP patent? How does the UPC interim injunction work?
Following comes the original IIPS invitation text in January 2023: