After many stops, starts and delays, the Unitary Patent and Unified Patent Court (UPC) are scheduled to take effect in June 2023, ushering in enforcement across the EU in a single action. This can greatly reduce your international patent costs and time spent on managing the application process, but the savings come with risks – including the potential for a single revocation action effective across the EU.
The new regime includes an opt-out option to remove a patent or application from the UPC and return it back to the jurisdiction of individual countries, and it’s critical that you understand the benefits and drawbacks of opting out before making this permanent decision. And then there are the new procedures to prepare for, as well as the potential impact on licensing terms.
There’s a lot to unpack, and universities must prepare and ensure a solid understanding of the benefits and risks of the Unitary Patent and the UPC. That’s why we’ve partnered with UK and European patent attorneys Matthew Howell and Isobel Finnie, both partners with HLK-IP, and our program leaders for this important and practical session:
You won’t want to miss this this critically important and timely webinar. Here is a peek at the program agenda:
- Brief history of the UPC
- Unitary patents vs European patents
- New considerations for tech transfer teams:
- Issues around contractual provisions to govern which party (licensor or licensee) decides whether to validate as a unitary patent or as a traditional national validation
- Which party decides whether or not to opt out
- How a tech transfer team decides on those issues where there is not yet a licensee
- Opt-out decision-making: Benefits, drawbacks, and evaluating your portfolio
- What is the UPC “Sunrise Period”?
- Procedures and powers of the UPC
- Costs
- For U.S. patent holders: How the UPC can affect international licensing terms
Meet your program leaders:
Matthew Howell
Partner
HLK-IP
Matthew joined HLK in 2018 and has more than 15 years of experience as a UK and EU patent attorney and has written extensively on the advent of the Unitary Patent and UPC. Matthew specializes in the fields of electronics, computing (including software) and telecommunications, and has undertaken work on behalf of a variety of major international companies operating in these fields, as well as SMEs and major universities. He has a keen interest in assisting start-ups in developing effective IP strategies.
Isobel Finnie
Partner
HLK-IP
Isobel leads the life sciences and biotechnology team at HLK, where her multi-disciplinary practice embraces a wide variety of life science technologies, especially in the fields of biotechnology and biochemistry. In the healthcare space she has developed considerable technical and professional expertise in the fields of cancer therapeutics and cancer pro-drugs, dermatology, biomarkers, diagnostics, vaccines, diabetes therapeutics, immunology, antibody-based therapeutics, stem cell technologies, DNA sequencing technologies and medical devices. A significant part of her practice is in providing strategic advice to universities and their spin-out companies.
