by Jeremy M. Ben-David, Founder, Managing Partner
It was during a particularly illuminating roundtable discussion about the patentability of diagnostic methods, US law, the Supreme Court and other such unhappy bedfellows, when the first proverbial light bulb switched on. Whether your metaphor is the first ray of sunshine peeking over the horizon, or floodlights clicking on all at once at a sports ground so as to turn dark night into brilliant daylight; it was just such a moment when I realized that the European Unified Patent Court (aka UPC) might actually be good for our clients.
But let’s start at the beginning. It actually goes back to the early days of the mass cancellation of events soon after the onset of the Covid-19 pandemic. I was going to be in the US for the 2020 LSPN meeting in Boston. I had never been to one of their events and it seemed like a good way to get to know them. As you would assume, the LSPN event fell by the wayside just like so many others at that time. I had prepaid for the meeting, and was given an option to attend a subsequent event, at my convenience.
And so it was that I stepped out of Holborn Underground station in central London into an overcast, frigid, late November evening, decorated with holiday lights. Quite charming it was. But I digress.
The next morning, I found my way to the De Vere Grand Connaught Rooms, the site of the small day-long gathering which was the LSPN meeting. Protected as we were from the damp chill of the outside, an intimate crowd divided equally between in-house IP managers and patent attorneys from private practice, crowded into the events hall, distributed around circular tables. There might have been a somewhat festive atmosphere, were it not for the sole refreshment on the table being bottled water, and formal presentations being conducted from the stage in the front of the hall.
And so the inevitable UPC-related onslaught began. Much or even most of the content had nothing to do with the UPC, but every time that it (the UPC) was mentioned, to me it was like a threatening dark cloud, one that had been threatening to intrude for so many years, and it was finally on our doorstep. The gloom of the UPC seemed to be confirmed when one of the presenters started by explaining that with the advent of the Unitary Patent, there will be four types of European patent available. Yes. Four. I started wondering about how much rational thought had been invested by those that dreamed it up… something like the definition of a camel (being a horse designed by committee).
Enlarged Patent Rights in a Single Jurisdiction
When seated at a roundtable discussion, the selected topic being diagnostic patents in the US (I know, what follows is a digression) we somehow segued into the topic of divided infringement when, for example, a claimed method of diagnosis involves the collection of digital data and sending it to another country for analysis, from which the processed data is then returned. In such a case, even though all of the patented method steps may have been performed, as they were performed in different jurisdictions, there can be no infringement.
And then it dawned on me. It was then that I saw that first ray of sunshine peeking over the dark horizon. Under the current European system, a company located, say, in France, can easily overcome any such infringement issues by performing some of the method steps in another European country, for example, Germany. Currently these neighboring countries are just that: two, neighboring, but nonetheless separate jurisdictions. Under the current system, a European patent ultimately devolves into separate national patents which can only be enforced in the relevant law courts of the relevant country.
And here’s the thing. With the advent of the UPC, the 17 countries that have so far subscribed to it will effectively become a single patent jurisdiction. And that means that for activities previously performed by dividing them among neighboring countries and with absolute impunity, similar activities may become infringing activities for future European Patents that are enforceable under the jurisdiction of the UPC. And as this works to the benefit of the patentee, namely, the clients whose interests we represent, this is a good thing!
Which leads me to a further, very serious point about our profession.
Changing for our Clients’ Benefit
We love to complain about change. Any change, simply because it’s well, a change. We long for things to stay the same (unless it’s a change that we thought of). When Israel acceded to the PCT we were worried about how that would affect incoming national filings. When the London Agreement came about, at least one of the EP countries took no part in it, primarily because the translation of European patents into their local language was such an income generator, and the provisions of the London Agreement would mean a substantial loss of that income. In countries acceding to the Madrid Protocol, trademark professionals (not all, but many) wring their hands in worry about the loss of income from direct filings into their country. And all of these worries about the effect on one’s own personal income became and will continue to be a major part of public discussion. In some cases, such worries even inform national policy. While this is not without some justification, an outlook which is solely based on self-interest may lead to a betrayal of the interests of those who provide our livelihood in the first place, namely, our clients.
And here’s the second point that must always be foremost in our practice. We represent our clients’ interests. First and foremost.
Yes, the Unitary patent system and UPC certainly look more like a camel than a horse. You have to wonder who dreamed up all of its complexities which will undoubtedly make for some very interesting and informative presentations in future LSPN (and other) events. However, with all of those difficulties that we, as professionals will face, there remains the following question, namely, at the end of the day, will the new system be of benefit to our clients?
In other words, will our clients benefit by having the option of being able to opt into a single legal jurisdiction covering multiple European economies, with the attendant cost savings? Will they benefit by being able to expand their ability to enforce in what are currently multiple jurisdictions? Will these and other features of the new system cost less while potentially providing more, thereby adding value to their patents a good thing for the patentee?
There can be no answer other than “yes”.
And that, my friends, is all that matters. Our clients will benefit from this option being available to them, per se; and, by dint of providing us with a livelihood, it is our clients who are our constituency, and they must come first. So a camel it may be, but bring it on!