Speaker 1  0:00  
All right, I want to make sure we stay on time, so we'll get started Good afternoon, and welcome to today's webinar how to manage patent prosecution, litigation and licensing under the new European patent system, presented by Autumn. My name is Sammy Spiegel, Autumn's Professional Development Manager, and I will be your staff host for today. All lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for our panelists, we encourage you to use the Q and A feature on your zoom toolbar throughout the presentation to submit your questions. If you have a technical question or a comment, please feel free to use the chat. If you need closed captioning for today's session, they will be turned on in a moment and available on your zoom toolbar to view before we begin, I would like to take a moment to thank and acknowledge our autumn online professional development sponsor, Marshall Gerstein, IP and we appreciate your ongoing support. I now have the pleasure of introducing you briefly to today's presenters joining us from Bergin, we have Robert Alderson, Michael Nielsen and Mariela Massaro, and I'm actually going to let them say hello and introduce themselves when we get started. And Bob Robert, I'm going to pass it off to you first to begin.

Speaker 2  1:14  
Thank you so much. Yeah, thank you. We appreciate very much. Appreciate having the opportunity to speak with everyone today about this new European patent system. We've been waiting for it for many years, and there have been a few obstacles that had to be overcome, like what to do about Brexit, what to do about the constitutional challenge before the German courts, but all of that has been cleared up, and the new system is set to go into effect very soon, before jumping into the presentation, let me just say a few quick words about the firm beregrin. The information will be on the slides, but which you will receive. Beregrin is about 85 years old. We're a large full service European IP firm headquartered in Helsinki, Finland, with a brand new office in Alicante, Spain that focuses on designs and trademarks. The firm is active in the autumn organization and also other organizations like Les. And in fact, in 2022 we spoke at the autumn annual meeting about this topic in New Orleans in February, and also recently at the Les annual meeting in in San Francisco. So next slide, please. Michael, so very quickly, I am both a US and European patent attorney. I have a degree in veterinary medicine and a degree in law, both from the University of Georgia. I worked in New York for nearly 14 years, 10 years in an am law 100 law firm prior to moving to Europe. Now, I guess I need to update that slide. It's now been 11 years since I moved to Europe. So today's presentation, we're going to cover three basic areas, if you can move the slide. Michael Nielsen is going to talk about the unitary patent itself and its effect on European patent prosecution. I will come back and talk about the corresponding court system, the new unified patent court system. And then we will conclude with Mariela talking about a very important issue, especially for university tech transfer managers and especially those involved in licensing. So how the new system affects licensing and collaborative agreements? So with that, well, I will also just echo what Sammy said. If you have questions, go ahead and use the Q and A, and we will try to get to those either in each section or at the end. We'll try to get to every question that you ask. But with that, I'll turn it over to Michael, who will start us off with the first part of the presentation.

Speaker 3  4:22  
Thanks. And as Robert said, I'm My name is Michael Nielsen. I'm a European patent attorney, and also a chartered patent attorney, or also known as a UK patent attorney. My background is primarily in European patent prosecution. I'm also responsible for the implementation of the unitary patent and unified patent court changes that we need to do within our firm. I'm going to talk about today, the the unified the unitary. Patent itself, its impact on European Patent Prosecution, but before that, I'm going to give a quick recap of the current system, just so we're all starting from the same point. So under the current system, the European Patent Office examines and grants what we call European patents. But these European patents are not a single patent that may be like a US patent can be enforced all over the US European patent cannot necessarily be enforced all over Europe. It first needs to be converted into national patents in each of the countries that participate in the European patent system. We call that process validation at the moment that can be done in 44 different countries. Those are all the ones here, shown in red, light gray and light blue on the map, it includes the entirety of the European Union. You can also see it extends slightly beyond Europe, with North Africa there, and even Cambodia, which is so far away it needs its own little cutout on the map. But despite the fact that all of the EU member states are members of the European patent system, the European Patent Office is separate from the European Union, so countries like UK, Norway, Switzerland, which are typically considered European countries, but are not part of the European Union, and also those countries like Cambodia that are clearly not part of Europe can participate in the current system. So presently, when you get your European patent granted, you go through this national validation process, and you end up with what we call a bundle of national patents in each of the countries that you decided to obtain the national patent in each of these national patents then exists almost entirely independently of the others. There's no possibility to enforce all of them, or even multiple ones in a single set of court proceedings. On the other side of that coin, it's not possible for all of them or multiple ones of them to be revoked in a single set of court proceedings. Small caveat there that the European Patent Office has its opposition procedure, but that's time limited, and the opposition have to has to be filed within nine months of grant of the European patent, so it's a very easy window to miss. Final point worth mentioning here is that renewal fees are payable in every country where the European patent was validated, where it was turned into national patents. Those are payable every year and have to be paid to keep the patents in force. So now, under the new unitary patent system, we will have something that looks more like a European patent with a single patent that will be enforceable and also revocable in multiple European countries in a single court action. The unitary patent is an EU instrument, so only countries that are part of the European Union are able to join the system. Robert already mentioned Brexit, which of course, leaves the UK outside of the system. Also countries I mentioned before, like Norway and Switzerland, cannot join the system because they're not part of the European Union, as can many of the other countries that are part of the current European patent system. So along with the unitary patent will come the new unified patent court, which Robert is going to talk about in a bit more detail later, this will have jurisdiction over all unitary patents, all of this new type of patent that's coming. But a very important point here is that the new court will also have jurisdiction over all existing and future European patents insofar as they've been validated in the countries that are participating in the system. What this means is that for European patents that go for national validation. So let's say you have national patents validated in Germany, France, Italy, all countries that are participating in the system, all, all of those patents can be enforced in a single action before the unified patent court, but equally, they could all be revoked in a single action before the unified patent court. And this is a big change, as in contrast to the current system, as I explained, where that kind of central revocation, as we would call it, is not possible. Another key difference is that a single renewal fee will be payable for all of the participating countries, one renewal fee for the unitary patent, which I'll talk in a little bit more detail about in a moment. So these are the countries that are going to be. Participating when the system launches, 17 countries at launch, several countries are fully expected to join later. Some countries that would be eligible to join as European member states are have made, made clear that either they won't join. Or recently, in the case of Spain, there have been suggestions that they might join eventually, but at least for the time being, we're not expecting them to be part of the system. So the reason that we've been talking about this now for, I guess, around 11 months is because in January this year, some of the formal steps that were needed finally took place, and the unified patent court as an entity came into existence, and the so called provisional application phase began. This provisional application phase means that some of the provisions of the legislation setting up the unified patent court, and the unitary patent came into effect that allows the system to be set up and to be in a state to begin operating once the full agreement comes into effect, we now expect that to be on the first of April next year, despite the first of April date, we don't think it's an April Fool's joke, although, despite growing confidence amongst everybody in Europe that this was going to be the last time that the date was pushed back, now we're hearing more rumors that it may be pushed back further. In fact, late yesterday, new rumors surfaced from the German government, and today, more comments around online about some of the problems that exist in the IT systems that certainly do not seem to be fixable in the time frame that's available. So further delay may be likely, hopefully not too much, hopefully no more than a few weeks or a month. And so before the system starts fully operating on whether that's on the first of April or the first of May next year, there will be a three month sunrise period where some more of the transitional provisions come into effect at the moment that's planned for first of January, so one month from today, and during that time period, it'll be possible to start to file opt outs. And now opt outs, Robert will talk a bit more about, but those are the mechanism that you can use to minimize or remove the risk of central revocation of your European patents that I already mentioned, it'll also be possible to start filing early requests for unitary effect, which is the official name For the request for grant of a unitary patent.

Unknown Speaker  13:02  
So looking

Speaker 3  13:03  
now at the way in which a unitary patent will be obtained, if you're familiar with the prosecution and grant procedure at the European Patent Office, then you may be pleased to know that almost nothing is changing. Their unitary patents will be granted by the European Patent Office in essentially the same way as for existing European patents. The unitary patent itself can essentially be seen as an alternative as part of the existing national validation procedure. So instead of selecting to validate your European patent in some of the countries, you can instead opt to obtain a unitary pattern. It's not possible to from a single European patent to obtain both a nationally validated patent and a unitary patent in the same country. Those are alternatives. However, there are some options that I'll come to in a moment that may allow you to still obtain both a national patent and a unitary pattern if, particularly in important cases, you wanted to get extra secure protection, and ultimately, for the time being, if the unitary patent doesn't seem attractive to you, then all of the options that are currently available remain so for the time being, at least, though the default action is changed, so you will need to take some action in order to maintain The status quo. And I mentioned the EPO opposition process already. There are no changes there either. It will still remain the cheapest and most powerful way to get a European patent revoked, including unitary patents, if one has been granted. So this flow chart summarizes the the. The examination and grant procedure for a European patent in the traditional sense. At the top in gray, we have the EPO search and examination procedure followed by the grant phase, and then within three months of grant of the European patent, you have to do the national validation process, which leads to the bundle of national patents in the countries that you selected. Now the new system sits alongside that with a slightly tighter deadline of one month after grant, this request for unitary effects has to be filed, and that leads to the unitary pattern. That unitary pattern sits alongside national patents in the countries that are not participating in the system, like the UK, like Spain, where you might choose to still nationally validate as you have been doing so far, there are some other transitional provisions that are worth knowing about. So for at least six years from the start of this new system, it will be necessary to file a full translation of the European patent specification in order to obtain a unitary patent, if the application was filed in English, as I imagine, essentially all, if not absolutely, all of the applications that you handle will be filed in English, then the translation can be made into any other official language of an EU member state, including those EU member states that are not participating in the system, such as Spain and Spanish. After this transitional period, it will no longer be necessary to file translations. But the purpose of the transitional period is to, firstly, to train the machine learning algorithms that will hopefully be able to produce high quality machine translations after this, and to provide information about the patents that are being granted, both in English and in another local language, one point I think is worth stressing here is that there is no official fee payable for the request for a unitary patent. So in my field, which is physics, a typical specification is, you know, five to 10,000 words long. We're probably looking at, you know, anywhere in the region of 500 to $1,500 for a translation there that meets the requirements as needed. So even though this translation is required, the total cost of obtaining the unitary pattern is not going to be particularly large in the context of other official fees that might be payable in other countries during this sunrise period that I mentioned that's starting, potentially from the first of January next year, it'll be possible to stop filing these requests for unitary effect, and it will also, during that time period, have to request that any European patents that those requests relate to their grant is delayed because a unitary patent can only be granted for a European patent that is granted after the system fully starts operating, so first of April next year. Now we're close enough to the start date of the first of January. If it holds that, we can say with almost certainty that it's possible to delay grant of any case that's that's close to grant in Europe, delay that for long enough to obtain a unitary pattern, even if there's a further delay of, say, a month or two, then that shouldn't change things significantly, and it should be possible to delay grant until the system starts operating and a unitary patent can be finally obtained. So given the lack of renewal, given the lack of an official fee for obtaining the unitary pattern, one of the biggest cost implications is actually the annual renewal fees that have to be paid to keep the unitary patent in force. The level of the renewal fee for the unitary patent has been set at a level roughly equal to the combined renewal fees in Germany, France, the Netherlands and Italy, which are the four most commonly selected countries for national validation amongst the countries that are participating in the interior patent system. However, it's actually relatively rare to validate in many countries. Something like 80% of all European patents are validated only in the United Kingdom, Germany and France. So there you can you can see already that the cost each year of the renewal fee for the unitary pattern would be higher than if you just validated in Germany and France, which we're only taking into account here, because the UK is not participating in the system. Nevertheless, even though the cost is slightly higher, the. We're not talking 1000s of euros higher. And the the extra scope of protection, geographic scope that unitary patent offers, is very significant. Even the start of the system when there will be only 17 countries participating, that's still covering over 70% of the EU economy. So getting all of that protection for one relatively low renewal fee is, at least in my opinion, a pretty good deal. One disadvantage of the unitary patent renewal fee is that it is a single renewal fee, and the amount of the renewal fee cannot be reduced by dropping off protection in some countries. So if you had validated, let's say in Germany, France, Netherlands and Italy, we're 15 years into the term of the patent, you have licensees in Germany and France, but you're confident that you're not going to get a licensee at this point in the Netherlands and Italy, you could drop the Dutch and Italian patents and stop paying the renewal fees and keep a bit more of your your budget intact. But that's not possible here. It's it's all or nothing. So to quickly summarize what I mentioned already, the unitary patent itself is going to be a new type of European patent that covers multiple EU states and allows for that single patent to be enforced but also revoked in a single action before the new unified patent court. The unitary patent is going to be granted by the European Patent Office in the same way as existing European patents in the process that you may already be familiar with, and the process of actually obtaining a unitary patent is essentially a new option in the post grant phase. There are no changes in the EPO opposition process either. So that's still a very powerful option. If it's something that you've ever used or been on the unfortunate receiving end of as I mentioned, there's a one month deadline after grant of the European patent to file the request for a unitary patent, including providing the translation, which is a relatively tight deadline. So even though there are no changes to the pre grant procedure in the in the European Patent Office, you want to be thinking about whether or not you should request a unitary patent before the grant of the European patent, and the system is likely to start in the first quarter or the very beginning of the second quarter next year. A further delay is possible, but not, not guaranteed by any stretch. And if a unitary patent is something that you're interested in, then it's it's already possible to delay grant of European patents that are heading towards grant at this time in order to obtain the unitary patent. And as I said, the renewal costs for unitary patents will be lower if the unitary patent replaces national validation in five or more participating countries. But even if the cost is not lower, the geographic scope is significantly expanded, so may be attractive. Finally, a couple of points I mentioned, the possibility, or rather the impossibility, of obtaining both a nationally validated patent and a unitary patent from the same European patent, which you know for a brand new system. We're talking about here, a brand new system, brand new patent, brand new court with no real no case law. At this point, it might seem like quite a big risk. And also, the new system presents new opportunities, aside from just mitigating risks. So one option is going to be to actually try and get both national patents and unitary patents. One way to do that is going to be to start filing divisional applications from your European patents. And for there are restrictions on double patenting at the EPO, but those restrictions are quite limited in scope, and if the claims do not have identical scope, then you should generally be okay. So you could perhaps have one slightly narrower claim that one patent was slightly narrower claims that you use to obtain a unitary pattern, one with slightly broader claims that you proceed to the classic national validation with, and ultimately end up with both national patterns and unitary patterns covering the same invention given. You know extra secure protection that would require two separate actions on the part of the third party to revoke an alternative to filing divisional applications. If you know that a case is very important from the beginning, is to already within the priority year, file the national application, because it will be possible to maintain a national patent that has been obtained via the national Patent Office, rather than via the European Patent Office and a unitary patent in most countries. So with that in mind, I'll pass over now to Robert, who's going to talk a bit more about the new unified patent court. Thank you, Michael.

Speaker 2  25:50  
Let me request control any questions so far from Michael's part of the presentation, we can also take questions at the end. But anyway, and I can't see when I'm presenting whether there's questions. So Michael, if you and Mariela, can monitor that. So along with the new patent system, there's going to be a corresponding court system. I

Speaker 2  26:27  
let me see if I okay. It's just a little slow. Let me go back. Sorry about that. So the the court system is made up of a Court of First Instance, that includes local and regional divisions as well as a as well as Central Division courts. This is similar to, this is analogous to, say, the district courts in the US. The appeal from these courts goes to a court of appeal in Luxembourg. And I guess the analogy there would be to the Court of Appeals for the Federal Circuit in the US, and then the Court of Justice of the EU May, at its discretion, hear a rule on issue preliminary rulings related to European Union law. So this is similar to the US Supreme Court and its discretionary appellate status, there will also be patent and arbitration, patent arbitration and mediation centers in Portugal and Slovenia. So I mentioned the central divisions, and the central divisions have exclusive jurisdiction for actions for revocation and actions for declaration of non infringement. And there were to be, there were going to be three Central Division courts located in Paris, Munich and London. After Brexit, the London court was out. They have not yet replaced the third court. And you can see that the these courts have jurisdiction over different types of subject matter, and the subject matter of the London court will be, will be managed now by Paris and or Munich I so the local or regional divisions are the local divisions are located in a number of cities in Europe, and this is current as of essentially today, the courts are listed there the regional there's a single regional division, and it is the same as a local division, except it covers more than one country. In this case, the the the Nordic or Baltic division includes Estonia, Latvia, Lithuania and Sweden, all. All of those countries have one court that's located in Stockholm, and these courts have exclusive jurisdiction over infringement actions, actions for protective measures and injunctions, actions related to provisional protection that's related to published European applications and actions that relate to prior use. So what happens if, after a patentee brings an action for infringement in front of a local or regional division? What happens if a counterclaim for revocation is then brought? Remember, an initial action for revocation would be handled by the Central Division, but in this case, the patentee filed an action for infringement and revocation comes in as a counterclaim. Under those circumstances, there are three possibilities. One is that the local or regional division can proceed with both actions. Actions on the other extreme, if the parties agree the entire case, the revocation and infringement action can be referred to the appropriate Central Division, or the counterclaim for revocation can be sent to the Central Division, and the infringement action can stay in the local or regional division, and either that action can either be suspended or proceed, so that would be a bifurcated case, somewhat like the current system in Germany. So there's also the possibility that a revocation action could be filed directly as the initial action before the Central Division, followed by an action for infringement at the local or regional division, and that and after that action for infringement, a counterclaim for revocation is is filed. So in that case, those same three options that I mentioned previously exist. So one other example would be if at the Central Division and action not for revocation, but a declaration of non infringement, and action for declaration of non infringement is filed, and in that case, it if a an action for infringement is filed within three months of the Central Division action, the Central Division action is stayed. If it's after three months, then there's no automatic stay. But the the judges can discuss how the cases would would proceed. So one of the biggest differences between US and European litigation is us. Litigation is quite expensive because of discovery. This doesn't mean that there's no discovery in Europe. There are under this system, there will be means for parties in the court to collect evidence in order for the case to proceed efficiently. So the UPC the court will have the power to grant orders to preserve and produce evidence, freezing orders, preliminary injunctions, seizure and delivery of products and things like that. So there are ways to get information to proceed with with a case that are kind of like certain aspects of discovery in the US. Another big difference between us litigation, and European litigation is in the US, the default rule is that each party bears its own legal expenses. The default rule in Europe is that the loser pays. And under this new system, there will be capped recoverable fees, recoverable costs that you can see in the right hand column, and that's based on the value of the proceeding. So as the value of the proceedings increases, the amount of capped recoverable legal fees also increases. There's also a a basic fee of 11,000 euro for relatively low cost value of proceedings. Well, there's the base the basic fee for all proceedings, and then there's an added value based fee for for those proceedings that have a value over 500,000 euro. And we don't need to go into how the value of the proceedings are determined, but it's in general, based on the remedies that are that are sought. These numbers are actually now official as of September 1 of this year,

Unknown Speaker  34:13  
trying To slides seem to be stuck a little bit.

Speaker 2  34:30  
Okay. So very quickly, the pros and cons of the new system. So as as a patentee, the UPC is a single forum, as Michael mentioned, where enforcement actions can be pursued across multiple countries. However, as the patentee, your patent can face a central revocation action and be revoked across multiple countries. A pro is that UPC, the UPC legal judge. Is our specialist patent judges, and they have a lot of experience in in patent cases in national courts, and so participating in the system gives you a chance to kind of influence the way that system works. But on the other hand, this is a brand new system, and it it actually includes sort of a combination of civil and common law systems, so the the results may be somewhat difficult to predict.

Speaker 2  35:36  
Yeah, my slide, I'm having difficulty moving the Okay, so very quickly I wanted to, before turning it over to Mariela, I want to comment very quickly on, on opting out of the system. So during a transitional period of at least seven years, that could be doubled to 14 years. It will be possible to opt classic European patents out of the UPC jurisdiction. Remember what Michael said earlier, all European patents, all existing European patents, are subject to the jurisdiction of the Unified patent court unless they are opted out of such jurisdiction. So you can see in the cone in the image on the right, you have both unitary patent and non opted out EP, classic EP patents that are subject to the jurisdiction of the Unified patent court and therefore are subject to a central invalidity attack, and in order to remove those classic European patents out of that jurisdiction, you opt them out, and they will be then subject to the jurisdiction of national courts, as they are now, it's very important To understand that this opt out process is only available for classic patents. Unitary patents cannot be opted out. So if you, if you decide you want a unitary patent, you were also agreeing or deciding that you were going to be subject to this new court system, and you can also with an opted out classic patent, opt it back into the system. Why would you want to do that? Well, perhaps you may want to opt your patents out to take away the risk of a central revocation proceeding, but if you then see that there's infringement over multiple jurisdictions that are involved in the participating member states of the system, and you believe in the strength of your patent, you may want to to withdraw your opt out and opt it back in, in order to take care of that infringement in multiple countries in One in one action. So my last slide, which my Mariela, can you go ahead and take, okay, it's it's there. Okay, so how do you decide whether to opt out or not? One way you can look at this is considering both the strength and importance of your patents, of your European patents. We, of course, we understand that all of your European patents are important. This is we're speaking in relative terms. So the relatively unimportant patents, you may not you may not have the need to opt them out. For those that are important, but you perceive that they they may be somewhat weak, you may want to selectively opt those patents out, for example, if the prosecution was difficult, if there's close prior art, if a opposition was a close call, you may want to opt those out. If it's both strong and important, then I think you need to look at it on a case by case basis. And this is just in general. There may be certain types of companies, like pharmaceutical companies, that for their important patents in particular, they're going to opt them all out. And for other companies, say Philips, that has sort of a licensing aspect of their business, they may see value in being in the system. So it's it's not. There's no one size fits all approach, and it has to be thought about very carefully. So I'll now turn it over to Mariela, who will talk about the effect of the new system on licensing and collaborative agreements. Marie

Unknown Speaker  39:46  
you're muted. Mariela,

Speaker 4  39:55  
hey, so my name is Mariela Massaro. So I have a law degree from the University of Turin, Italy, where I practiced as an IP attorney at law for 15 years, handling about litigation and transactional matters. Then three years ago, I moved to Bergen, where I am a partner, and I recently also qualified as a certified licensing professional. So today we will be briefly focusing on the licensing aspects of the new system, and in particular, there is a mechanism that you have to be aware of when you evaluate the opportunity of opting out once a litigation is brought in front of the Unified patent court, the UPC, or a national court, in A matter of course for which the UPC has jurisdiction, then there is a pinning effect of that patent in the system in which it was at the moment in which the action was brought so if the patent was not opted out, and the action is brought in front of the UPC, then the patent owner is not allowed to opt that patent out for the entire life of the patent, irrespective of the duration of the proceeding and the outcome of it, and the same with the National Court. So when you decide of about opting out. You know that, in theory, you have the opportunity to opt back in if infringement action for you in the specific moment is is appealing in front of the UPC, but you can do that unless, in another action, like a revocation action, for instance, is brought in front of a national court, and so you will not be able to opt back in. So there is always a little bit of a risk. There is also an important aspect of the new system that you have to keep in mind when you draft your license agreement, according to the unified patent court agreement, an exclusive licensee is allowed to bring autonomously an action in front of the Unified patent court only provided that the patent owner is given prior notice. Does the patent owners, prior consent by default, per se is not needed. You can do something about that in your license agreement to fix it, at least at a contractual level, but this is the starting point. On the contrary, a non exclusive licensee is not allowed to bring autonomously an action in front of the UPC unless the license agreement allowed it to do so already, from what we saw in these slides, it's already apparent that the interests of the licensor and the licensees are not aligned as they are in the current system, because as a patent owner, you may be more concerned about a risk of a central revocation attack, and so you may want to avoid the unified patent court system, while the licensee may be more attracted by the efficiency and convenience of a central infringement action. So given the freedom that relative freedom that especially an exclusive licensee enjoys under the new system, it's important that in the license agreement, the patent owner retains back some of the control, and this is true also with respect to co ownership. So let's see, for instance, here for existing co ownership agreements that related to granted European patents or pending patent applications on SPCs prevent certificates. It's important now to discuss the opt out strategies with the other corners, because for a valid opt out to be lodged, it's necessary the consent of all corners. So now that we are still in in a preparatory phase, it may be an opportune time to reach out to the other callers. Owners and discuss the opportunity to opt out, also, with respect to pending applications that are called now it's also a good time to discuss what type of patent Do you want at the end of the procedure, will be a classic European patent that will be validated in certain country or will be a unitary patent. So this is with respect to the current agreements, with respect to future joint co ownership agreements or inter institutional agreement. It's important to address in these agreements, said the the questions that are highlighted in the slide, which party decides the type of the future patent, which party decide on opting out or opting back in, or which party is responsible for implementing these decisions and and they're the associated costs, because, of course, in in a in theory, all corners have the right to decide, but if it's possible, it's always advisable to put a an efficient mechanism, decision mechanism in place in order to to Avoid to be stuck and not reach any decision. So in an agreement, depending on the concrete situation, if it's possible to to enable one part or I read or to agree already in advance on these issues will save a lot of headaches along the way. The same questions may be addressed also in a license agreement, because, of course, a licensee does not enjoy the same rights as a co owner, because it's the owner that is or a corner that has the right to decide on opt out strategies and of the type of the patent that will be requested at the end of the procedure. But we know that current license agreement may have a language that it's perfect now, but may be ambiguous in respect to the new system, because sometimes an exclusive licensee in Europe is granted certain freedom in deciding how to manage the patent prosecution in Europe, because often the license in Europe are pay, is paying for for the patent prosecution, and basically leads the The patent prosecution strategy. So if there is any ambiguity in this respect, like there is nothing that mentions expressly in the license agreement that you, as a licensor, are the only one that has the right to decide, or at least as the last word, then a Lesson C may also argue that, because of the ambiguous language, that since he is leading the party prosecution Europe, also these decisions, according to the license agreement, are are something that he can can manage. So be very clear about that also, because the as we saw in one of the previous slides, that the exclusive licensee is allowed to bring autonomously an action in front of the court without obtaining the patent owners prior consent, this is something that you can instead request in the license agreement. And also, we know that such control is especially needed if you have multiple licenses, because in the event you are licensing a unitary patent to multiple licenses in Europe, then an action brought from maybe an infringement action brought from one licensee that results in a contact claim for revocation and in the invalidity of all the patent. It's the patent at this point is known for that licensee, the patent owner, and also all the other licensees. So it's really important that the patent owner is responsible for coordinating the litigation strategy in Europe. If a unitary patent is chosen, also it's Hmm,

Speaker 4  49:42  
it's possible that a particularly refined, sophisticated licensee can negotiate the additional representation and warranty clauses, because we saw how difficult is the situation in case of CO ownership and. So if I were advising a licensee, I may request any guarantee that the licensor is the only corner, or the only owner, or if it's a a corner that in the in the issues that are interesting for the licensee, that the licensee is is willing to to discuss with the licensor like so there is a is a discussion about the opt out strategy, that what the the licensor is is agreeing, is able to obtain the consent from the other corners. So it's a bit complicated, but it's possible, so be prepared in the event the licensee brings these issues on the table with respect to the territorial coverage. So finally, we will have a unitary patent. So with a unitary character, this means that an assignment may be done, but only with respect to all participating member states. So transfers and lapse of the patent, this is done all for all participating member states, but it will be still possible in the future to license a unitary patent with respect to only part of the territory, so it will be possible to have more licensees, and as we say that this makes things a little bit more complicated when there is a risk of litigation. An important aspect that you have to take into account in drafting your license agreements is the applicable law, because the unitary patent will be subject to EU law, and in particular to the unitary patent regulation, the UPC agreement, the European patent convention, if you know it's an issue that is governed by the EPC, but also with respect to issues related to a Patent as an object of property. So, for instance, the use of a patent as a collateral, or another example, is the rights of the joint applicants. Then a national law of a participating member state will be used. And you may say which law when. So it's the law of the country where the applicant has its residence or principal place of business or a place of business. And this applies, of course, to to European applicants. And in the event of joint applicants, it's important the order to look at the order of entry of the applicants in the patent register. So if, now that was not important, so the if a co applicant was listed the first, second or third, actually today, this will determine the law that will be applied if, of course, one of these applicants is has a residence or principal or a place of business in European country, if not so, probably most of your cases where no applicants have their are located In Europe, then German law as the law of the country where the APO is located will apply. So let's make an example in order to clarify this situation that it seems more complicated than actually is. If we have joint applicants from the US and France, then it's easy, like the only European in the equation is France, and so French law will apply. If we have joint applicants from the US, Finland and France, then we remember the order of entering the patent register. In this case, the Finnish applicant is listed second Finnish law will apply in the third clay example is a little bit more complicated, because in addition to the order of entry, there is also a hierarchy in the criterion applied, where residence or principal place of business is more important than just a place of business. So in the third example, French law will apply, and I give you a concrete example how this may change things for for for you, if French law applies, unless otherwise agreed, in in in the in the agreement to the joint ownership agreement, each corner has the right to. Sign hits part of in the patent independently the consent of the other corner is not important. It's not required. But in France, there is a right of preemption of the other corners. In Italy, for instance, the consent of each of the corners is required in order to be able to transfer your part of your share in the patent. So you see how the different law can change the situation for you, last slide is about the impact of the new system on the value of the license licensing professionals. We are very excited to see if, as we are talking about, that if a unitary patent will result in a more high, you know, in a higher royalty, in a higher value in the license. Because if you consider that the unitary patent covers a larger territory, or you consider that a unitary patent allows to obtain damages, injunctions and other temporary or permanent measures with respect to all the territories where the patent has effect, then we may say that for sure, it there is more value there, of course, disadvantages can also with the the risk of a central revocation attack, but this has to be assessed on a case by case basis, because a patent may have survived successfully a European opposition or in general, like the researchers the that you made, make you comfortable about the strength of the patent. And so this risk is very minimal. Also, the fact that you proactively, like retain control of the litigation in your license agreements or in CO ownership agreements also contributes to to minimize the risk that, you know, one party brings an action and jeopardizes the patent. So let's see if, if we can see a an increase in in the royalty value for unitary patent. We also prepared some links for with the resources that you can access. We have a page on our website with UPC. UPC, frequent questions, articles, timeline and checklist, and also the, of course, the official pages of the EPO and the UPC.

Speaker 2  57:48  
Thank you. Thank you. Mariela, any any questions? I know we covered a lot of ground, and there's a lot of information packed in those slides that I as I understand it, Sammy, you will be sharing those with the people who registered.

Speaker 1  58:04  
Yes, absolutely. So attendees, you will get access to these slides. You'll have contact information and those hyperlinks that will be in the autumn Learning Center. So a great resource to help digest all of this information. I know it's a lot, so thank you all for getting us up to speed so we're prepared when this goes into effect, while we wait for a couple questions to potentially come in. Are there any kind of key takeaways points you want to make sure that folks remember leaving with today? Kind of those, those key elements to be mindful of?

Speaker 2  58:37  
Yeah, how about each of us do one? Michael, you go first.

Speaker 3  58:42  
Okay, if I go first, then I get to the easy job. So for me, the key point to take away is that all of the these changes are going to affect every already granted European patent that you might have in your portfolios. And if you do nothing, then something will change. They will be subject to this new unified patent courts jurisdiction, and that does come with the potential risk of central revocation of multiple ones of your nationally validated patents in a single action. There are options to manage those risks, but you have to be active about it. So if you've not thought much about this yet, or just haven't quite made a decision yet, now is really the time to figure it out.

Speaker 2  59:34  
Yeah, and I guess I would add, I guess my take take home message would be, my my goal was to give you an overview of the of the court system. It is especially during this transition phase that we're in, it's going to be quite complicated. And so if you do have a litigation issue, there are all sorts. Sort of interesting strategies that you might want to think about using a national court in the UPC at the same time, but that goes beyond the scope of this presentation. But I just wanted to point out that there, there are a lot of nuances in the in how we can use these court systems to greater effect.

Speaker 4  1:00:24  
And from my point of view, I already recommended to check with your licensees and CO owners the issues that are necessary to assess in this moment. But I would add also, if your the chain of title of some of your patents is not updated, it's the moment to do it now, because when if you decide to opt out that patent and the real owners are not those indicated in the patent register, then additional declarations have to be filled with providing evidence of the chain of title. So now it will save more complications later, especially because they opt out just their sunrise period will last three, four months, and that's not so much time, actually. And

Speaker 2  1:01:35  
then I guess I could also add that we've given this same presentation or similar presentation to many, many universities, individually, and if any of and law firms as well, if any of you would like to contact us to have a dedicated presentation for your whole team, we're happy to do that. You know better, to do it before the system goes into effect than after. And then one other way that we've been assisting us universities is to look, take a look, actually, Mariela and a couple of our colleagues can look at your template agreements, template, license agreements, template, template inter institutional agreements, to make recommendations for modifying it. Some of these things that Marielle is mentioning Don't, don't require a big overhaul of your template agreements. It just requires a couple of statements to take these issues into into account, and it can be done quite quite quickly and quite quite effectively, especially now that we've got experience in reviewing a pretty wide range of university template agreements.

Speaker 1  1:02:55  
Excellent. Well, thank you all so much for those, those parting thoughts and wisdom attendees, as as as they all mentioned, contact info is available. So if you do have follow up questions that may specifically apply to your needs, please feel free to reach out. I hope I'm not getting in trouble for saying that and opening up your inboxes. Michael Robert and Mariela. So I think with that, I will say, thank you all so much for such an informative discussion and attendees, thank you so much for joining us today. As a reminder, a recording of the webinar will be available on the autm Learning Center within a few days of this session, probably by midweek next week, and that recording is included in your registration, and that is where the slide handouts, as well as a certificate of attendance can be accessed. Please remember to complete a webinar evaluation, which you will be emailed following the session that helps us to serve your needs in the future. And we really appreciate your feedback. So with that, I will say thank you all once again, and I hope you all have a great rest of your day and evening for our friends in Europe who joined us tonight. So thank you all very much, and we see see you soon.

Transcribed by https://otter.ai