Briefings

UPC: I MIGHT BE AN INFRINGER!

This is part of our series of articles on the UPC.   

Elsewhere, we have outlined the new system and the availability of the “opt out” for the patentee to avoid this. We have discussed the position of licensees under the new system. Here, we turn to consider the position of third parties who might be accused of patent infringement under the new system. 

Pan-European infringement proceedings – the current situation 

As discussed previously, existing “classical” European patents can be litigated at the new Unitary Patent Court (UPC) after the system takes effect. If you are a third party with activities in several countries in Europe, under the current system a patent proprietor would have to bring infringement proceedings against you in each country. The court processes would usually proceed independently of one another. You could counterclaim for revocation of the patent and, again, these issues would be considered separately by each national court. There have been cases in the past where the conclusion on one or both of infringement and validity was different in different countries, as a result of different interpretations of the law, different case law, and different procedures for taking and testing evidence. 

Infringement proceedings at the UPC 

Once the UPC takes effect, there will be the possibility of a central action alleging infringement, covering all or most of the relevant countries (with national proceedings also taking place in countries where the UPC does not apply). This raises the possibility of a single court being able to decide on infringement across multiple territories, and to award damages and other remedies against you in relation to activities in all those places. In some cases, this possibility of a unitary decision may be much more risky than the cost of litigation in multiple jurisdictions. 

There is also the possibility of infringement and validity proceedings being considered separately by the court (as is already the case in some countries such as Germany). This may expose you, as an infringement defendant, to a pan-European injunction even while validity proceedings are ongoing within a different forum, perhaps to a slower timescale. Therefore, there is a prospect of being at the end of a powerful attack without much time to respond, in view of the UPC streamlined procedure. 

Be prepared – keep watch 

In light of these risks, it is important to be prepared. Rather than waiting to be sued under a potentially invalid patent, you may wish to attack first, or at least be aware of potentially problematic patents and have ammunition ready for responding within the short timeframe of UPC proceedings. 

This approach necessitates vigilance in identifying and responding to potential patent threats. Early detection of an infringement risk can provide an opportunity to oppose (see below) or to pre-empt litigation, for example by negotiating a licence or engaging in alternative dispute resolution. Whilst the proactive approach requires investment and careful management for compatibility with other jurisdictions, it may still be better than being injuncted without a chance to challenge validity to the extent you might wish. 

Consider using the EPO opposition system 

EPO oppositions against European patents continue to be available for nine months after grant and will remain separate from the UPC system. Where a patent has been opted out of the jurisdiction of the UPC, an opposition would be the only means to attack an invalid patent centrally and pre-emptively. This can be done anonymously using a “straw man” approach, and at relatively low cost compared to full litigation. 

The UPC will stay proceedings brought before it if “a rapid decision may be expected” from the EPO. Whilst EPO opposition proceedings have historically been rather slow, this has improved in recent years and oppositions can be filed with a request for acceleration. In this way, a pending validity challenge may at least provide some deterrent to immediate enforcement by the patentee before the UPC. Furthermore, even if the opposition is not successful, there is the opportunity for further arguments and/or evidence to be submitted in a counterclaim of revocation before the UPC.  

If you would like support in relation to any aspect of the UPC, please contact us. This article should not be taken as legal advice, it is for guidance only.