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EUROPEAN PATENT COURT


an infringement, and subsequently to argue for a much narrower interpretation of the same claim in order to show the claim to be valid. Under the UPC, such bifurcation will be an option and is, perhaps, likely to remain in use in local divisions in Germany. Injunctions issued by a local division, or the central division, will be extremely valuable as they will be pan-European. Tey could also inflict enormous harm on businesses. Tus, a company accused of infringement could be prevented from trading in a disputed product throughout the EU by an allegation that it infringes a patent. It would have no ability to defend itself on the grounds that the patent is invalid if the court chose bifurcation, and there would be no likelihood of a speedy resolution because the infringement issue would have to be determined, in its own time, by the CJEU.


What happens now?


Various IP professionals in the UK are fighting hard to try to amend the unitary patent and UPC provisions. If they fail, they will seek to persuade the UK government not to sign up to the UPC.


UK businesses are already considering how to mitigate the problems which might arise if the new court is imposed on them. Already, some large UK-based companies are routinely filing


“ALREADY, SOME LARGE UK-BASED COMPANIES ARE ROUTINELY FILING BRITISH NATIONAL PATENT APPLICATIONS ALONGSIDE THEIR EUROPEAN APPLICATIONS.”


British national patent applications alongside their European applications to ensure that they will never need to use the UPC for infringement and other disputes arising in the UK. Tis practice arose even before the current, flawed proposals saw the light of day. UK business needs certainty and while the high standard and speed of access of the English courts are known, the standards and speed of the UPC, however formatted, are not.


If the UPC comes into effect as presently suggested, particularly if it is with the UK as a member, UK professionals will need to advise


their clients to consider reverting to filing national patent applications instead of European cases in the future. Furthermore, for existing cases, clients will be advised to file opt-outs so that they can avoid the use of the UPC, at least until it has developed the necessary expertise. n


Jacqueline Needle is a partner with London firm Beck Greener. She can be contacted at: jneedle@beckgreener.com


Jacqueline Needle is a partner of Beck Greener, a London firm of patent attorneys. Jacqueline is an electrical and electronic engineer and experienced in patent draſting and prosecution. She also has a Litigator’s Certificate giving her the right to conduct litigation in IP matters in the English courts.


World Intellectual Property Review January/February 2012


33


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