The patent landscape in the EU is on the brink of the most significant change in a generation and the Unified Patent Court (UPC) and a new “unitary patent” or “European patent with unitary effect” (UP) will soon become a reality.
This seminar will provide an update on progress, an overview of the associated pros and cons of the new system and discuss the contractual implications for patents which are licensed-in, licensed-out or jointly owned with third parties. Who decides whether to opt-out a patent? Do all co-owners have to agree? How do you ensure the opt-out is valid? Who decides whether to designate a UP? How could the applicable law impact on a UP? Who has the right to initiate litigation in the UPC?… are just a few of the questions we will cover during the seminar alongside some more practical guidance on what patentees and SPC holders should be doing now and looking out for.
The UPC will have an impact upon ownership, prosecution, enforcement and licensing of European patents and Supplementary patent certificates across at least 17 EU Member States (including Germany, France, Italy and The Netherlands) and as the Provisional Phase of the UPC is now live, a potential start date may be as early as 1 September 2022.
The new system has many advantages but does include some risks which some patentees may prefer to avoid, at least for the moment. Those patentees who wish to take their existing European patents outside the UPC’s jurisdiction, will need to be ready to apply to opt-out, possibly from early summer 2022. Equally those who wish to take advantage of the multi-jurisdictional UP designation and the possible cost savings associated with this new patent right, will also be able to take advantage of Sunrise schemes which will lead to grant of a UP shortly after the UPC goes live.
- Michelle Davies, Legal Director, HGF Law
- Rachel Fetches, Partner & Head of Law, HGF Law
Michelle is a highly experienced transactional IP specialist. Michelle provides strategic and transactional IP advice to clients in a wide range of sectors and has specific expertise within the pharmaceutical and life sciences sector having worked 12 years with AstraZeneca and with a BSc in Pharmacology & Physiology.
Michelle is experienced in the drafting and negotiation of a whole range of agreements including licensing, co-development, clinical, manufacture, services and supply contracts and has provided IP advice on a number of major corporate licensing transactions, acquisitions and business sales and works regularly with many educational institutions and their spin-out companies.
Michelle regularly presents on a broad range of IP and commercial topics including licensing, strategic IP protection and GDPR. Michelle has also delivered a range of legal training focused towards compliance programmes within in-house teams, including on topics such as Good Document Practice, Handling Sensitive Information, Alliance & Post-Deal Management, Market Disclosure & Insider Trading and Issue Management Team Set-Up & Support. Michelle sits on a University Ethics Committee for the review of life sciences projects and is a member of the Licensing Executives Society and Pharmaceutical Licensing Group.
Rachel is an IP/Patent Litigation Partner and advises on contentious intellectual property matters for clients across a broad range of sectors including, life sciences, pharmaceuticals, healthcare, chemicals, food and beverage, aviation, media and telecommunications industries. She has extensive experience of litigating before the UK Patents Court, High Court and Court of Appeal. She has also regularly advised in relation to pan-European IP litigation strategy for both patents and trade marks.
More info here.
Book your place Now