Oddfellow June 2024
18/07/24
J.A. McStea, Teemacs GmbH
Oddfellow
Bubendorf, 21 June 2024
Happy birthday to you…
So, the UPC has reached its first birthday. And there are lots of retrospectives in various blogs, so I won’t bore you by repeating what you have probably already read. Suffice to say that, after various initial glitches with the Case Management System (which I gather is still not perfect), the system has worked rather well, and appears to be delivering the promise of a decision within one year of the case being brought. It has also been surprising to see how extensive use has been. The EPO has registered more than 27,500 unitary patents, about 25% of all EPs granted in the year since the UPC opened its doors for business (a Unitary Patent can be requested post-grant as part of the validation process, but must be done within one month from grant, as opposed to the usual 3 months for national validation).
Everyone expected many major players, especially Big Pharma, to play a wait-and-see game and opt out all their important cases. Yes, there have been substantial numbers of opt-outs, but there have also been many pharma cases. The big winner, case-wise, seems to be Germany, especially the Munich, Mannheim and Düsselforf local divisions – of the 134 infringement actions, Germany was the court of first instance for more than 100 of them. Although UPC contracting states (shortly to be joined by Romania) have registered the majority of UPs, the leading registrant is medical technology company Johnson & Johnson, second place going to Siemens AG and third to Korean conglomerate Samsung. Surprisingly, the second highest selector of unitary patents (after Denmark) is perennial stick-in-the-mud and would-be saboteur Spain. The USA is among the most cautious users, along with China, Japan and Korea.
Swizzieland, like the UK, is not a UPC Contracting State, but we have to live with this new system as, ultimately, all EPs will fall under the auspices of the UPC, once the 7-year opt-out period (possibly extended for another 7 years) finishes. And, of course, anything not opted out could still be the subject of a UPC lawsuit, which would be a threat to the entire scope of the EP. As a result, we’ve gone through the whole portfolio, decided on which patents to opt out. Two of the Givaudan attorneys are listed as representatives before the UPC (both are EPO Professional Representatives with the necessary recognised litigation certificate). Only an attorney thus qualified can request an opt-out. The opt-out query is now built into our EP procedures.
Ireland was at one point touted as a new home for the UPC Central Division position left vacant by London when the UK pulled out of the system (a place now occupied by Milan, albeit in a reduced role). However, a Constitutional Amendment is required for Ireland to ratify the UPC Agreement, which in turn requires a referendum. Ireland held two referendums in March of this year, both related to proposed Constitutional updates regarding family matters. Although both were supported by all the major political parties, both were resoundingly rejected, only one Dublin constituency, Dún Laoghaire (“Dun Leary”), voting narrowly yes to one of them.
Given this result, the Irish Government decided that it was necessary to give some better public education prior to a referendum on a subject that makes most people’s eyes glaze over after a few seconds. In addition, an Irish General Election is due by March next year, so the can has been kicked down the road, and nothing more will be done until the new Government has been elected. I suspect we’ll hear nothing until 2026.
So, 21 June as I write, for us the days will now get shorter, while yours get longer. Summer is coming. I hate summer. Roll on autumn…
