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.
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: