upc image
Bristows UPC Logo

Commentary

Commentary Header

Double protection and forum shopping under Germany’s draft UPC legislation

21 March 2017
Draft legislation to implement the unitary patent system into German law would amend the Patent Act in such a way to allow, in principle, the same invention to be protected by a German national patent and by a patent subject to the exclusive competence of the UPC.  This article examines the proposed amendment and its implications.
Peter Höcherl (Patentanwalt seconded to Bristows), Annsley Merelle Ward and Nadine Bleach
​​​​​​​

Countdown to the UPC

13 March 2017
This article was first published in the CIPA Journal, March 2017. Alan Johnson looks at the timetable to the predicted start date and whether there is still scope for more delays.
Alan Johnson
​​​​​​​

The arrival of the Unified Patent Court

24 February 2017
This article was first published on Lexis®PSL IP & IT, February 2017.  Alan Johnson is interviewed about the effect of the recent announcement that the UPC will open in December 2017, including how businesses can prepare .
Alan Johnson

UPC - UK ratification

9 February 2017
This article was first published in the CIPA Journal, January-February 2017.  Alan Johnson looks at reasons for the UK government’s decision on ratification, and the remaining steps required.
Alan Johnson


Unitary patents and the Unified Patent Court

2 February 2017
This article was first published on Lexis®PSL IP & IT, February 2017.  Alan Johnson looks at the new system, including its history and structure, translation requirements, fees, the Court’s structure, transitional provisions, bifurcation, forum shopping and financing.
Alan Johnson
​​​​​​​

UPC to come into effect in 2017

28 November 2016
The announcement today that the UK will ratify the UPC Agreement is a major surprise because most observers had considered the prospects of the UK accepting the supremacy of EU law (albeit over a limited range of specific issues) and the role of the CJEU in a new legal environment to be politically unlikely following the 23 June referendum. 
Alan Johnson

Opening Life Sciences’ Unified Patent Court war chest

12 October 2016
Life sciences companies are used to patent litigation before European national courts. Vanessa Rieu and Annsley Merelle Ward explain how such companies can continue to leverage their knowledge of national laws when using the UPC’s new tools to maximize their success. This article was first published in European Pharmaceutical Review, October 2016. 
Vanessa Rieu and Annsley Merelle Ward

Counsel's opinion on Brexit and UPC provides limited comfort

5 October 2016
Alan Johnson looks at Counsel’s opinion on the legality of the UK participating in the UPC system post-Brexit, and considers the way forward.
Alan Johnson
​​​​​​​

99 seconds on...BREXIT

20 June 2016
Three days remain until UK voters decide whether to stay in the EU. But how would either result affect the UPC?
Luke Maunder


UJUB’s UPC Opt-out Day

16 June 2016
Gregory Bacon reports on the UJUB’s UPC Opt-out Day held in Paris, when the operation of the opt-out of classical European patents from the UPC regime under Article 83 of the UPC Agreement was explored and a mock hearing held to test the procedural rules for opting out.
Gregory Bacon

UPC: Preparing for the Sunrise Period

15 June 2016
During the “sunrise period” patentees may opt any of their existing European patents out of the new UPC system before it starts.  With the expected start of the sunrise period only months away (autumn 2016), Alan Johnson and Rachel Mumby look at the process for deciding and implementing an opt-out strategy.
Alan Johnson and Rachel Mumby
​​​​​​​

UK implementation of the Unitary Patent and UPC

28 April 2016
On 12 March 2016 the United Kingdom published secondary legislation  (“the Order”) to amend existing primary legislation so as to give effect to the Unified Patent Court (UPC) Agreement and the EU legislation on the Unitary Patent.

The UPC IT's coming

23 March 2016
Luke Maunder looks at the development of the UPC’s case management system and considers some issues still to be addressed. 
Luke Maunder

Threatened changes result in justified concern

3 March 2016
The government has accepted the Law Commission’s recommendations for reforming the unjustified threats provisions relating to intellectual property rights, but Claire Phipps-Jones explains that issues still remain with how such actions can be pursued in relation to Unitary patents and European patents that have not been opted out of the UPC and that unwary patent advisors should take heed.
Claire Phipps-Jones


No fee to opt out of the UPC

1 March 2016
Katie Hutchinson reports on the decision that there will be no fee payable to opt a European patent out of the UPC system or to later withdraw any opt-out, and looks at the opt-out process.

Katie Hutchinson


Tricky valuations, complex discounts, and false ceilings – the Report of the UPC Preparatory Committee on court fees and recoverable costs

29 February 2016
Following the UPC Preparatory Committee’s publication of its decision on Court fees and recoverable costs, Claire Phipps-Jones explains that, while the fee structure is clear, navigating the related provisions will be a journey which some litigants will find less than certain.
Claire Phipps-Jones
​​​​​​​

Justified Changes

13 January 2016
A recent update to the UK unjustified threats law was essential in light of the imminent Unified Patent Court, explains Steven Willis. 
Steven Willis

UPC Concerns aired at AIPPI in Rio de Janeiro

12 October 2015
Alan Johnson, committee chair of AIPPI's unitary patent/UPC committee, discusses the Unitary Patent and Unified Patent Court at this year's AIPPI Conference in Rio de Janeiro.
Alan Johnson

The Opt-Out – is there basis for a fee?

22 July 2015
Many users are unhappy at the prospect of paying a fee to avoid their patents being litigated in the UPC. This article explores whether there is a legal basis for requiring such a fee in the first place.    
Benedikt Migdal

Consultation on UPC court fees, opt-out fees and recovery of costs 

15 May 2015
On 8 May 2015, the UPC Preparatory Committee published its Consultation Document containing the proposed fees for litigating in, and opting out of, the UPC and a proposed scale of recoverable costs in the UPC.
Alex May

The UK General Election and the UPC

8 May 2015
Following the Conservative victory in the UK election on 7 May 2015, Alan Johnson discusses the implications for the future of the UPC should Britain vote to leave the EU after an ‘In-Out referendum; this has been promised by the Conservative government before 2017.
Alan Johnson

Understanding the transitional provisions of the Agreement on the Unified Patent Court

21 April 2015
Richard Pinckney explores the uncertainties in the transitional provisions of the UPC Agreement, their impact on patentees and prospective users and how certainty might be achieved.
Richard Pinckney

The Unitary EU Patent System 

27 March 2015
Alan Johnson has written a chapter in the newly released book ‘The Unitary EU Patent System’, where he explores the future implications for users of the UPC. Alan Johnson

SPCs and the UPC:  Current Status

20 February 2015
Laura Reynolds considers the potential scenarios for patent proprietors with supplementary protection certificates under for new UPC system.
Laura Reynolds

Preparing for the UPC

13 January 2015
Bristows team chairs panels at US conference.
Richard Pinckney

The second Spanish challenge to the UPC system – will the CJEU follow the AG’s Opinion? UPC 2 - 0 Spain (but it's only half time)

27 November 2014
Ignacio Gonzalez Royo and Alan Johnson assess the likelihood of the CJEU dismissing Spain’s challenge to the legality of the Regulations creating the unitary patent system. 
Ignacio Gonzalez Royo
Alan Johnson

The second Spanish challenge to the UPC system – the AG’s Opinion

19 November 2014 
Ignacio Gonzalez Royo and David George look at the reasoning behind the Advocate General’s recommendation to the CJEU to dismiss Spain’s challenge to the legality of Regulations 1257/12 and 1260/12 creating the unitary patent system.
Ignacio Gonzalez Royo
David George

17th draft Rules of Procedure of the UPC – the highlights

3 November 2014
Alan Johnson notes the highlights of the changes in the latest draft Rules.
Alan Johnson

Issues surrounding the creation of the UPC in Europe
The following articles by Alan Johnson were first published in Intellectual Asset Management in September and December 2014 (following the first series of articles published in June and July – below).
Europe as a primary patent litigation venue
UPC system start date could be 2017
Renewal fees must not derail a Community patent again
Fee uncertainty – resolution necessary for Unitary patent progress 
Bifurcation ruled out under the new rules?
Draft UPC Rules – what the 17th draft may contain 
The judges - experience, skills and training
Actions by NPEs, and tactics for defendant
Who might choose to use the new system
Alan Johnson

Licences and collaborations - does the UPC have an impact?

30 September 2014
Sahar Shepperd looks at the effect of the UPC regime on licences to European patents and on collaborators’ joint ownership of patents.
Sahar Shepperd

Software, patents and interoperability – the UPC regime and UK implementation

15 August 2014
Amy Cullen looks at the UPC Agreement’s exception to infringement to allow software interoperability, and the draft UK implementing legislation.
Amy Cullen

Issues surrounding the creation of the UPC in Europe, and strategic decisions to consider now

The following articles by Alan Johnson were first published in Intellectual Asset Management in June and July 2014.
The preliminary injunction regime
Judge power - injunctions and bifurcation
Forum shopping - bad news for defendants (probably)
The transitionary regime – a dangerous mess
Transitional provisions mean complete uncertainty
All patent-related deals in the EU must factor it the new UPC regime now
Before exercising the right to opt-out there will be plenty to consider
Alan Johnson

Unitary patents and the UKIPO opinion service – one step forwards, one step back?

20 June 2014
Claire Phipps-Jones looks at the changes to the UKIPO opinion service proposed in the draft legislation introducing the UPC regime in the UK
Claire Phipps-Jones


Draft UK legislation to facilitate introduction of the UPC regime

10 June 2014
This article sets out the main issues arising from the draft legislation to introduce the UPC regime in the UK (open for consultation until 2 September 2014). Subsequent articles will look in more detail at certain points.
Alan Johnson


16th draft UPC rules - the highlights

06 March 2014
Alan Johnson discusses the highlights of the latest draft rules.
Alan Johnson


The UPC – one year on

March 2014
This article by Alan Johnson was first published in the CIPA Journal.
Alan Johnson

SPCs for Unitary Patents by Alan Johnson

30 October 2013
This article looks at how SPCs are to be granted for unitary patents is now under active consideration by the Commission
Alan Johnson


Proposed amendment to the Brussels 1 Regulation: some potential issues

22 August 2013
This article reviews the proposed amendments to the Brussels 1 Regulation and considers whether they meet the stated purpose of ensuring compliance with the UPC agreement.
Richard Pinckney and Alan Johnson


The role of the saisie in the UPC

20 August 2013
Bristows consider why the saisie is so prevalent in French patent proceedings. 
Anne-Laure BouzanquetAndrew Bowler and Alan Johnson

UPC Rules of Procedure - the opt out regime
12 July 2013
The Preparatory Committee, in the Q&A section of its website, states that “applicants or proprietors of one single application for a European patent or one single European patent (emphasis added) will have to act in common to exercise the opt-out.”  In this article Bristows' experts look at whether this is a correct interpretation of the UPC Agreement and the draft UPC Rules of Procedure. 
James Boon, Alan Johnson, Richard Pinckney and Philip Westmacott

UPC draft rules - the big issues

5 July 2013
Alan Johnson analyses the major issues relating to the new draft Rules of Procedure (open for consultation until 1 October 2013).
Alan Johnson

Could the CJEU kill the “for the life of the patent” UPC opt out regime?

7 June 2013
We have raised in a previous article (here) the issue as to the jurisdictional confusion caused by the wording of transitional provisions of the Agreement on a Unified Patent Court (“UPC Treaty”), especially Article 83(1).   In this article we consider how this confusion might be resolved, and conclude that it is possible – even probable – that this will come before the CJEU. 
Alan Johnson / Richard Pinckney

Unitary Patents and the Unified Patent Court

The following articles by Alan Johnson were first published in the CIPA Journal in January  - June 2013.
Part 1: immediate implications
Part 2: the Court structure and language regimes
Part 3: forum shopping and jurisdictional battles
Part 4: procedure
Part 5: potential popularity
Part 6: second Spanish challenge
Alan Johnson

Brave new world for innovators in Europe

18 March 2013
Alan Johnson wrote an article about the Unitary Patent system for an IP supplement which appeared in The Times. It looks at the challenges faced by businesses in Europe as the system begins to be rolled out.
Alan Johnson

Will amendments to the Brussels I Regulation delay the start-up of the UPC?

19 February 2013
Richard Pinckney

Europe has spoken: now it's up to the judges

12 February 2013
Two new regulations have brought Europe closer than ever to a Unitary Patent regime. However, the compromises that have been deemed necessary risk creating a patchwork system far more complex and hostile to users than that which it will replace. Read the latest IAM article* on the challenges of the Unitary Patent and UPC system. (Available to IAM subscribers only). 
Alan Johnson and Philip Westmacott



*This article originally ran in issue 58 of IAM magazine (March/April 2013) and has been reproduced with the permission of the publishers, the IP Media Group, London