How should patentees change their decision making processes?

Deciding whether to file national, traditional EP or Unitary Patent applications.

It is for the applicant to elect whether or not to have UP protection. Therefore, it will still be possible to continue to file traditional EPs, but designate only certain individual States (eg if the applicant was only interested in one or two countries anyway). For these patents, it would then be possible to opt out of the UPC environment, either immediately or during the transitional period, and assess how that Court was progressing before opting (back) in, provided no national court action takes place in the meantime.

Similarly, it remains possible to apply for national patents in countries of interest, which will only ever be subject to the jurisdiction of national courts, as is presently the case.

Having a mixed portfolio of UPs, non-unitary European patents and national patents would be a conservative, but possibly a prudent strategy, balancing the risks and rewards of the new system. Patentees should consider now what would be an optimal strategy for its business and start to consider how it will decide on what invention will be protected by what patent right.

Deciding whether to use the opt-out for existing “traditional” EP applications.

Cautious patentees and litigants will wish to consider opting out for their existing (and valuable) EP portfolios, at least until the benefits and disadvantages of the new system become apparent. However, initial feedback is that the quality of the UPC judges will be high. There is every chance that, in time, the UPC will be regarded as the leading forum in Europe for the resolution of patent disputes, in which case patentees will be less likely to opt out and more likely to opt back in if they have previously opted out.

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