How the UPC will change the patent landscape

All decisions will be cross-border

All decisions from the UPC will be cross-border and will take immediate effect in all participating Member States. Accordingly, a preliminary injunction against a Danish company's sale and marketing of its products will take effect immediately in all major European markets. It will no longer be possible to sell the product on these markets. 

Patent disputes can be heard and decided by local or regional divisions of the UPC across EU

A Danish company risks getting sued for patent infringement at the French division of the UPC and having to defend itself in French. The decision from the French division will take immediate effect in (almost) all EU Member States. 

"Front-loaded" system 

The UPC is based on a principle of effectivity, and the main idea is that no case should take more than 1 year. Accordingly, cases will have to move quickly through the system, and deadlines for responding will be very short. 

The deadline for submitting defendant's statement of defence is 3 months (calculated from the date of service of the statement of claim). Any counterclaim for revocation (nullity) must be filed together with the statement of defence, i.e. within the 3 months deadline. This is very little time as anyone with patent litigation experience will reckon. 

As a general rule, it is not possible for a party to supplement its first submission with new evidence or arguments - not even as part of potential appeal proceedings. Thus, the statement of defence has to be the defendant's complete and full response, i.e. all relevant evidence must be submitted with the statement of defence, including possible expert declarations, and including all and all material to support a counterclaim for revocation. This is going to be a challenge, and currently no European country has a similar system. Also, the statement of defence, including all exhibits, will have to be translated into the language of the proceedings, which could be e.g. French or German depending on the forum. 

More patents in force

Because of the new Unitary Patent (see The Unitary Patent), which will automatically cover (almost) all of the EU Member States, a much larger number of patent rights is expected to be in force in the participating Member States compared to the system with traditional European patents where the applicant must designate in which countries protection is sought and may ultimately choose not to obtain patent protection in certain countries. In all likelihood, this means that there will be a larger number of patent rights covering the Danish territory which Danish companies will therefore have to take into account. 

Possibility for ex parte injunctions and orders

Under the UPC, it will be possible to obtain a preliminary injunction and/or a preliminary order ex parte, i.e. without the defendant being offered the possibility to defend itself in the proceedings. Accordingly, under the UPC, a Danish company risks facing a preliminary injunction immediately preventing it from selling and marketing its products on all major European markets without even having had the chance to defend itself as part of the proceedings.

Protective letters

To mitigate the risk of an ex parte preliminary injunction and order, it will be possible to file a so-called protective letter  (see Preliminary Injunctions) with the UPC. A protective letter is a substantive defence brief submitted to the UPC in anticipation of subsequent litigation, i.e. before filing of any lawsuit. It explains that, in case an application for a preliminary injunction and order is filed against the company (concerning a specific product and/or specific patent), then the UPC must consider the content of the protective letter before making a decision concerning ex parte preliminary injunction and order. 

Crucial to monitor competitors' patents

It will be necessary for businesses to monitor and assess more closely the patent rights of their competitors, including new potential patent rights on their way, which may restrict the company's access to the European markets. As part of such monitoring and assessment, businesses must also assess the need for filing protective letters in anticipation of litigation concerning such patent rights. Such monitoring and assessment were already relevant, but given the risk of cross-border measures and ex parte preliminary injunctions and orders, such monitoring and assessment should be intensified. 

Need for "emergency boxes"

To properly navigate and mitigate the risks of the UPC as set out above, it will be necessary for companies to prepare so-called "emergency boxes", which, as a minimum, should include:

• A list of people to call if sued;
• Names and contact details of the external advisor team, i.e. lawyers and patent agents;
• Name and contact details of the internal team responsible for handling any matters;
• Names of translators (for the most important languages, i.e. German and French);
• Names of suitable experts;
• Preliminary drafts for briefs, including drafts for relevant invalidity and/or non-infringement argumentation;
• Preliminary drafts for expert declarations;
• Preliminary drafts for protective letters. 

 

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Our team of experts

Do you have any questions on this topic? Don't hesitate to contact Partner Nicolai Lindgreen, Partner Nicolaj Bording, Attorney Emil Petri, Attorney Mathias Rønø Bove or Assistant Attorney Victor Fasmer Henum.