Episode 8: The Unitary Patent - 18 Months On
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Introduction
Episode 8 of the LexisNexis Evolving IP podcast features Bobby Mukherjee, Chief Counsel IP Technology Law at BAE Systems.
In this episode, we meet with Bobby to discuss the evolution and impact of the Unitary Patent 18 months after its launch.
Bobby highlighted the significance of the Unified Patent Court (UPC) in providing uniform patent protection across 18 EU member states and its potential to be a game-changer in European patent law.
He emphasized the importance of maintaining quality, predictability, and balance in UPC judgments. He also addressed the challenges of non-practicing entities (NPEs) and the strategic decisions businesses must make regarding opting in or out of the UPC system, considering factors like cost, portfolio management, and risk.
Podcast Host
- Francesca Levoir, Head of Brand Strategy and Solutions Marketing
Expert
- Nigel Swycher, Strategic Advisor at LexisNexis Intellectual Property Solutions
Highlights from the discussion on the Unitary Patent
On his patent policy work
“I do remember working on the Unitary Patent/Unified Patent Court project when the UK signed up to the Unified Patent Court agreement.
“I had to play a prominent role on behalf of UK IP in actively engaging with the parliamentary stages of the UK IP Bill 2013 to 14. This resulted in the UK IP Act 2014 with a positive outcome for the industry.
“And it made me realize, then, from that personal direct experience, how important it is for people with relevant business and IP expertise to get directly involved and to help shape IP policy positively for the benefit of UK PLC.”
On being involved with the CIPA
“I feel immensely privileged and excited to be the next CIPA (Chartered Institute of Patent Attorneys) President as of the first of January.
“An area of focus is how to improve access into the UK IP profession that’s close to my heart, through the creation and development of new vocational pathways, namely through new IP apprenticeships for different roles.
“For me, it makes complete business sense, and it’s fundamentally about advancing social mobility.”
On why a Unitary Patent matters
“The arrival of the Unitary Patent (the UP), and the Unified Patent Court, (the UPC), is the biggest, most exciting development, I think, in European patent law and practice over the past 50 years or so.
“It matters because it provides uniform patent protection through a single new patent right – the new Unitary Patent – across all participating EU member states, and it provides a litigation system under the UPC, a one-stop shop, allowing for Pan-European injunctions and damages awards.
“So, it’s a huge step forward.”
On why the implementation of the unitary patent system took so long
“As well as legal and technical dimensions. It had a key complex political dimension which should not be underestimated.
“In 2020 the UK finally withdrew from the EU and then withdrew its ratification of the UPC, whilst remaining a party to the non-EU European patent convention.
“In 2021 the German Constitutional Court rejected the challenge to the UPC, and Germany ratified the protocol of provisional application, paving the way for ratification of the UPC itself and the launch of the UPC.”
On the future of the UPC, and the impact of Brexit
£I think the UPC project is a is a potential game changer, provided it is able to maintain its quality, predictability and balance and speed as its caseload increases, amplified by the extensive geographic reach of its decisions.
“The populations covered by the EU participating member states, 18 at the moment and the USA are, I think, roughly comparable. It’s more than 300 million people. Wow.
“Under the UPCA [Agreement on a Unified Patent Court], London had originally been assigned one of the Central Division seats, but once the UK left the UPCA that needed to be reassigned and subsequently was allocated to Milan.
“So, it was disappointing to me, personally, when the UK withdrew its ratification of the UPC.
“Personally, I still think it may be possible for the UK to rejoin the project at a later time. It’s certainly worth bearing in mind for the future.
On the question of whether unitary patents are opportunities for NPEs
“[A] significant part of patent litigation in the USA currently arises from such activity. The first set of NPE lawsuits. interestingly, reached the UPC in January this year, seven months after the UPC opening.
“I think it’s still too early to be able to answer your question with certainty, recognizing, though there is a real risk here for business as the defendant, in my view, at least.
“Though possibly some patent assertion entities might consider that it is more risky to use the UPC because of central revocation risk, or the risk of having to pay substantial costs to the winning party if one loses, unlike the US litigation system, or the possibility that larger companies might be more motivated to defend against patents in this forum.
“I know also that the UPC charges significant fees on a value based sliding scale, coupled with the need to fully flesh out a case at the outset, that might make it a higher investment for a patent assertion entity than a claim in, for example, the UK of similar value.
“So, watch this space.”
On how to advise CEOs about IP protection
“You have to go into the detail and understand what technologies you’re looking at. You have to look at it, case by case.
“Certainly, at BAE Systems, our approach is we look at inventions generously at the outset, and as time rolls on, we look at inventions more critically, and we prune the cases in consultation with our business colleagues.
“We don’t do this in isolation. We take this seriously. We work closely with our colleagues across the business.
“The bottom-line question is “Are we creating value using our Intellectual Property?”
Bobby’s key takeaway
“Get involved in policy.” Listen to Bobby expand on this point in the short video below.
Nigel ‘s key takeaway
A Unitary Patent represents a significant change to how European innovation can be protected. It’s fascinating to hear how Bobby frames the national, European and global perspectives, the complex balance of opportunities and threats.
Whilst it’s clear that we need to wait and see, Bobby’s message is compelling: companies need to engage, because the power to influence the future is so much greater from within the system and in times of powerful geopolitical forces, Europe needs a stable and strong IP infrastructure if it is to compete against global superpowers, including both the US and China.