Laura Orlando’s comments on reaching agreement on who has the right to seek or request opt-out or opt-in in relation to European patents and the up-coming UPC jurisdiction over them have been quoted by Managing Intellectual Property in an article of 16 June 2022: UPC special focus: Review licensing deals to avoid heartbreak, counsel warn.  

Milan-based Orlando, co-lead of the HSF IP practice worldwide and of EMEA Life Sciences for the firm, suggests getting agreements recorded to avoid problems further down the line. She is quoted saying that “it’s paramount that licences and co-ownership agreements are reviewed now to include regulation on the UPC” and further commented that like other aspect of the licensor-licensee relationship, it will go much more smoothly if the parties already communicate regularly.

Laura advises that it is best practice to update older licences to reflect the unitary patent and UPC coming into force: it is not just rights over opt-out that need consideration but any review should include clauses relating to finer points such as the control over litigation forum.

Read the full article at Managing Intellectual Property here (subscription only)

Laura Orlando
Laura Orlando
Partner, Milan
+39 02 3602 1386