Double patenting in Germany – Options for a choice between the UPC and the German national courts

On the date that the UPC Agreement comes into force, the German prohibition on double patenting will be amended so that it only applies to European patents that have been "opted out" of the exclusive jurisdiction of the UPC. For European patents that have not been opted out of the UPC and for the new unitary patents, patentees will be allowed to maintain a German national patent in parallel to the European patent and infringement litigation before the German courts will be possible in relation to the national patent. Read more

UPC – Mediation and Arbitration – rules and objectives published

The Patent Mediation and Arbitration Centre (PMAC) forms part of the Unified Patent Court (UPC). Its rules of operation are have now been published. It operates independently, but carries out its tasks in close contact and cooperation with the committees/bodies of the UPC which will have to take decisions in relation to the operation of the Centre. The Centre has its seats in Ljubljana, Slovenia, and Lisbon, Portugal. Mediation and arbitration proceedings can be held either at the seats or elsewhere. Read more

UPC – The location of 13 local and one regional division courts announced and numbers of legally qualified judges at each

The UPC Administrative Committee has issued confirmation of the location of the various local and regional divisions of the Unified Patent Court (UPC).  Whilst all other participating states will have one local court (or participate in the Nordic-Baltic regional division announced), Germany will have three local division courts - Dusseldorf, Hamburg and Mannheim. At the same time the numbers of national judges on each panel have also been confirmed for each court. Read more

UPC Rules of Procedure – final version approved

The UPC Rules of Procedure  have been approved. Amendments to the previous 2017 draft have been released by the UPC Administrative Committee, in tracked changes form, with a full consolidated version promised to be "published during the course of the summer, before the Rules’ entry into force on 1 September 2022".  One of the most significant changes is to opt-out procedures, but others include the use of video-conferencing, public access to pleadings and confidentiality club arrangements. Read more

The IP in NFTs – What is being purchased?

As we reported in our first blog post in this series, non-fungible tokens (NFTs) are a new asset class that is being adopted eagerly across all sectors, raising some interesting challenges from an IP perspective. While NFTs have demonstrated themselves to be a powerful tool in the new digital era, they remain poorly understood, in particular in relation to the rights that are (or are not) transferred on purchase of an NFT. Releasing (known as "minting") and purchasing NFTs can give rise to a number of IP-related issues, such as: - Who has the right to create and release NFTs? - Does the NFT infringe third party rights? - What rights are transferred with the NFT (and on resale)? - How this rights transfer is achieved? Read more

The IP in NFTs – what you need to know

Non-fungible tokens (NFTs) are one of the hottest IP topics currently. NFTs can be used simply for marketing purposes or as a new form of asset to attract investment or as part of the transfer of products and services into the Metaverse.This new asset class has exploded across all sectors and raises some interesting challenges from an IP perspective. While NFTs have demonstrated themselves to be a powerful tool in the new digital era, they remain poorly understood. In our series of blog posts on NFTs, we explore intellectual property considerations, misconceptions and issues that we are seeing arising in the NFT space, including, in this first blog post, clarifying what NFTs are and how they can create effective control over digital assets and the use of NFTs for provenance and anti-counterfeiting. Read more

French Supreme Court says cross-border patent infringement claims may be possible

The French Supreme Court has issued a decision quashing a Paris Court of Appeal decision and thereby opening the door to the jurisdiction on the merits of French courts to rule on cross-border claims for patent infringement based on national designations of a given European patent, where the products in suit in the different countries are the same (Hutchinson v. Dal, Global Wheel et al. 29 June 2022, Appeal No. G 21-11.085). Read more

Further progress towards the start of the UPC system

Jérôme Debrulle, Chair of the Select Committee of the Administrative Council for the Unitary Patent, has recently said that his committee’s work in preparation for the coming of the UPC is now complete.  He commented in an EPO press release that “In October 2021 the Select Committee adopted an ambitious work programme to complete the … Read more

Irish Government reaffirms its commitment to the UPC but referendum date may be as late as 2024

The Irish Government has reaffirmed its commitment to participate in the UPC, issuing a statement earlier this week (28 June 2022). However Ireland requires a public referendum to confirm that it should ratify the UPC Agreement and uncertainty about the timing of this looks likely to mean that Ireland will not be one of the states forming part of the UPC system on Day 1, given that recent announcements place the start date for the UPC in early 2023. Read more