What You Need to Know about Your European Patent Strategy …

By Doreen Davis-Owen

With US tech and life sciences companies expanding globally faster than ever before, it has become increasingly important to have an international patent strategy for both the protection of products/software and potential infringement disputes. I recently attended a seminar on “Mastering the Global Patent Game,” which was sponsored by both the Licensing Executives Society (“LES”), Silicon Valley Chapter, and UK law firm fieldfisher. The event was held at fieldfisher’s office in Palo Alto. So, what do companies need to know when implementing an European Patent Strategy?  In addition, how will the proposed Unitary Patent Court (“UPC”) impact existing European patent strategies with the significant change of a single patent system?  Moderated by David Knight, Partner, London Office of fieldfisher, the panelists of expert patent attorneys from the UK, Germany, Belgium and the US engaged in a lively discussion with a full house of primarily US Intellectual Property (“IP”) attorneys. So, what do US companies need to know when putting together a European patent strategy?  According to the panelists, US companies should be aware of the following:

• A well thought out international patent strategy is critical to doing business in an ever increasingly competitive global market
• It is imperative to file patents for the protection of your product/IP in the “right” European countries, in order to more effectively manage your strategic business objectives and IP budget
• While patents are granted by the European Patent Office (“EPO”), the infringement of patents currently is dealt with within each country, and every country has its own interpretation of European patent laws.  So, choose your countries wisely, not only for commercial purposes, but for patent protection reasons as well
• Keep in mind that court proceedings are conducted by judges in Europe, not juries as in the United States.  Certain national courts have more expertise in patent infringement and technology cases
• The subsequent outcome of court proceedings and litigation, can vary dramatically within the European Union (“EU”), depending on the country’s procedures and national rules which can give rise to a pro-patentee or pro-defendant bias
• It is extremely important to understand the advantages and disadvantages of each country, including pre-litigation discovery, inspection and speed of litigation, in order to choose the right country for pan-European disputes. Traditionally, the UK, Germany, France and the Netherlands are more advantageous countries within the EU for patent infringement cases, although national laws and procedures vary within each of these countries, but one can also take advantage of procedural quirks in other EU countries.  For example, Begium has a very liberal approach to non-party discovery which can be used to obtain information and data that can be used in a patent infringement action elsewhere.  Therefore, an understanding of the differences is a key factor in a company’s decision on where to litigate

So, what will the single patent system mean for US tech and life sciences companies doing business in Europe?  The panelists briefly touched on the Unitary Patent Court Agreement (the “Agreement”), which is expected to be ratified in 2016 or 2017, with the following thoughts:

• US companies should carefully consider their existing patent strategy to determine if registering under the UPC makes sense, or not
• Under the Agreement, companies with existing European patents will have the opportunity to opt-in or opt-out of the new system for the first seven years, with a possible extension of another seven years afterwards.  The decision to opt-out would mean the continuation of disputes held at the national level within each EU Member State, but one can opt back in if it is decided to pursue a claim on an EU wide basis.  The UPC would have no jurisdiction on national patents; and, therefore, some companies are opting to file national patent applications for their key inventions until the inevitable uncertainties of a new system have faded
• The UPC is anticipated to make it easier and less expensive for companies to obtain patent protection under a single patent  enforceable with one action across the EU.  However, it will mean that the patent stands the risk of being revoked on an EU wide basis in one action.  There will be one Central Court and a number of Regional and Local Courts.  The Central Court will have divisions in London, Munich and Paris – London for chemical, pharmaceutical and life sciences patent; Munich for mechanical engineering; and Paris for the rest.  The Court of Appeals will be based in Luxembourg
• At this point in time, there is still a great deal of uncertainty as to the timing and ultimate impact of the UPC

For additional information on the UPC Agreement, please reference article by David Knight of fieldfisher.  Should you have any questions on the UPC or your European patent strategy, please feel free to contact David at david.knight@fieldfisher.com or Pete Doyle of Nortons NIS Global at p.doyle@nortonsgroup.com. Many thanks to Mark Webber, Partner of fieldfisher, for the invitation to attend the event and to fieldfisher and the LES for putting on the informative program. Until next time, Doreen

[This post originally appeared at NIS Global.]