IAM recently interviewed our IP partners Laura Orlando and Sebastian Moore in an article The EU’s UPC launch is imminent – here’s what IP strategists need to know, published on 25 January. The article explores the key steps and decisions for patent professionals in the months leading up to the UPC's launch and some of the important strategic considerations that should be factored in, including opt-out strategies, pros and cons for the life sciences industry, uncertainties on procedural questions, and much more.
The UPC may present the opportunity for pan-European enforcement in a single action, but it also brings the threat of pan-European patent revocation. Weighing the potential advantages and risks will be a key area of focus for innovators, particularly in the life sciences industry. Sebastian Moore, Partner based in our London and Milan offices, suggested: “What is likely to happen… is that you are going to have the good strong patents that protect blockbuster products being litigated in traditional fora. The more speculative patents may end up being litigated in the UPC; the ones that protect less important products or are more open to challenge.” As the court system will be completely new and the procedural rules drafted from scratch, the biggest concern for companies will be uncertainty.
At the same time, Laura Orlando, Managing Partner for Italy and EMEA Co-Lead for Life Sciences, believes that life sciences companies will not want the case law to be shaped by others. She claimed: “The idea that life sciences companies will be inclined to opt out is an idea I do not entirely agree with. It seems to me that this is too simplistic. Now there is a feeling that there will be an advantage for patentees to have a say in shaping the system.” Laura continued: “It will not be so black and white that the life sciences industry will opt out. The key players will somehow be obliged to have some involvement from the beginning.” For patent holders, there is a sunrise period for opting European patents out of the UPC's jurisdiction which the EPO says will start 3 months before the UPC commences.
Discussing some of the challenges companies and patent professionals might face in the early period following the UPC's launch, Laura told IAM: “My expectation is that there will be so much attention paid to addressing procedural issues in the early years, that there will be less attention paid to forming case law on substantive issues.” Sebastian added: “There will be huge jurisdictional issues, between national courts and the UPC and between regional courts within the UPC… there will be a long bedding down period.”
Both regular commentators on the UPC, Laura and Sebastian last spoke to IAM in December 2021, discussing the remaining preparations that companies and their IP advisors should look out for this year.
As the launch of the UPC approaches, visit our UPC Hub to stay up to date with the latest news, including the start of the provisional application period for the UPC following the deposit of Austria's instrument of ratification of the Protocol.
Our fully integrated, market leading European patent litigation team is ready to advise on all aspects of the practical and strategic issues you should be considering in preparation for the UPC. Please contact us for further information.
Laura Orlando
Italy Managing Partner, Joint Global Head of Intellectual Property, EMEA Co-Head of Life Sciences, Milan
Key contacts
Laura Orlando
Italy Managing Partner, Joint Global Head of Intellectual Property, EMEA Co-Head of Life Sciences, Milan
Disclaimer
The articles published on this website, current at the dates of publication set out above, are for reference purposes only. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action.