You have heard about the new European Unitary Patent and the Unified Patent Court ("UPC")? Since June 01, 2023, you can be sued before this new court. This creates an additional and significant risk for you:
| Frequency | Many patent owners, including so-called "patent trolls," will file patent infringement suits there. |
| Scope | Judgments have simultaneous effect in several countries. |
| Effort | Defenses are significantly more burdensome (compared to national proceedings). |
| Time pressure | The UPC applies a strict regime with very short deadlines. |
Consequence:
A new, significant and potentially existential risk that requires risk management (for Germany regulated in: Sec. 1 (1) StaRUG, Sec. 289 (2) HGB).
Patent Monitoring
Now even more important than ever: Monitor relevant patents, e.g. those of your competitors. Remember to update your results on an ongoing basis.
Team
Assemble a team for UPC cases. The UPC does not recognize court vacations. There will likely be no extensions of deadlines. Plaintiffs can take advantage of that. Once you have been sued, you will have little time to assemble a team first. Select suitable lawyers and patent attorneys early. Selection criteria:
a) UPC approval. Not all patent attorneys have it.
b) Patent litigation experience. Only few specialized attorneys have it.
c) Technical expertise.
d) Ability to manage projects for complex processes.
e) A multilingual team.
f) Solutions also for UPC venues outside Germany.
Receipt of E-Mails
The Unified Patent Court may contact your company by e-mail, for example when it has received an action. However, the court will not yet disclose any details, but will only ask if you agree to be served by e-mail. This request may be sent to the general e-mail address listed on your home page. Therefore, ensure the following:
- Your firewall should not block e-mails with the sender domains @unified-patent-court.org and @unifiedpatentcourt.org.
- The central receiving office should not reply to such e-mails, but should forward them to the Patent Department or to the Legal Department.
List of Technical Experts
Create a list of potential technical experts. Party experts will be an important means of evidence before the UPC - much more important than in German courts. If you are sued, you will be glad to have such a list. Check with your UPC team, they may even be able to approach potential experts before a lawsuit is filed to prevent them from acting for the other side. But be careful: Do not influence the experts, otherwise you could lose your evidence.
General Common Knowledge
Create a collection with general common knowledge in your field, for example your own education materials, training literature from young professionals, presentations, and materials from conferences. In UPC proceedings, the parties must present and prove the general common knowledge, and they must do it very quickly. This is very different from the German national invalidity proceedings. It is often particularly difficult to prove trivial technical facts. A collection on the relevant technical principles can therefore pay off.
Prior Art Searches
Conduct prior art searches for patents that you have assessed as critical. UPC proceedings have a strict deadlines regime. If you start a search only after you have been served with a lawsuit, you will be under enormous time pressure, which can lead to higher costs and loss of quality.
Non-Infringement Opinions
Commission external non-infringement opinions for particularly critical patents. Unlike under German law, they can help you avoid or reduce the amount of damages that you have to pay in a “worst case” scenario, Art. 68 (1) and (4) UPCA.
Protective Letter
If interim measures are threatened, e.g. in the case of a product launch or a trade fair presentation, a so-called protective letter can be useful in certain cases. However, caution is advised here, because a protective letter can even make it easier for the court to issue an interim injunction without an oral hearing in some cases. It is often better to make a very brief statement. The same usually applies to out-of-court replies.
Step 1
Determine a project manager - internal or external. Sequence planning. e.g. weekly control meetings.
Step 2
Define work streams and work on them in parallel. For example:
- Non-infringement
- Workaround solution (incl. Freedom to Operate / apply for patent for the new solution)
- Inform customers and potentially also the public
- Information of suppliers / cooperation / recourse
- Attack the Legal validity of the patent in suit
- Confidentiality interests (attacked product / rendering of information)
- Settlement possibilities
- Counterattack
- Financial planning / budgeting