Possible Reasons You Might Want Your National Validations of an EP Patent Within the Jurisdiction of the UPC (i.e Not Filing an Opt-Out)

1. A single, quicker and potentially cheaper court system is preferred

Litigation in several national courts can be complicated and expensive. Litigation at the UPC is not only likely to reduce the administrative burden of litigation, but also reduce its cost. Your patent may not be important enough to warrant the high litigation costs in several national jurisdictions. A single action at the UPC is also likely to be concluded much more quickly that multiple actions in several jurisdictions.

2. The patent is not critical to your business

If the patent does not cover a core part of a commercially important technology, the possibility of central revocation across all of the participating EU countries is less significant. For instance, the central revocation of a patent which is part of a large portfolio is likely to have less of an impact on your business than the central revocation of single patent underlying a significant revenue stream.

3. The patent is unlikely to be litigated

If the patent is not likely to be litigated or attacked by third parties, there may be little point in opting out to avoid central revocation across all of the participating EU countries.

4. Your competitors are based in several European countries

The UPC allows you to enforce and/or defend your patent across all validated jurisdictions in a single action. For instance, you may be able to get a pan-European injunction.

5. You do not want the burden of opting out national validations of an EP patents

Although there is no fee for opting out patents, it may involve considerable analysis, particularly if you have a large number of national validations of an EP patents and only wish to opt out a portion of your portfolio.

6. You do not want to leave the development of the UPC to others

Many businesses are interested in taking an active role, through precedent-setting litigation, in the early development of UPC case law and procedural matters.

7. High quality at low cost

As explained above, the UPC is expected to be cheaper than litigation in several national jurisdictions. However, it expected to attract the top judges from around Europe.

8. The patent is not licensed or is licensed to only one party

The lack of a licensee or the existence of a single licensee in one country avoids the potential problem of multiple licensees in different countries being faced with central revocation by the UPC. For instance, if a unitary patent is being licensed to different parties in the UK and Germany, a licensee in the UK where the patent is not being infringed may balk at the risk of the patent being revoked centrally (i.e. including in the UK) by the UPC while being enforced by the different licensee in Germany. This situation does not arise if there are no licensees or only one licensee.

 

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