1. Patent is strong

One of the main reasons to opt-out from the UPC system is that a European patent with all its national parts may be invalidated by one single (counter-) claim for revocation. However, this threat is significantly reduced if a European patent has already survived validity challenges in opposition proceedings or in revocation proceedings before the national courts. If a European patent has been maintained in opposition proceedings before the EPO or before the national courts, it is not a given that these decisions will be overruled by the UPC.  So, if a European patent has already proven its validity in EPO opposition proceedings and/or national revocation proceedings, there are good reasons to keep the option to use the UPC for the enforcement of the patent.

2. Patent is validated and/or likely infringed in several participating UPC member states

The key benefit of the UPC is the opportunity to enforce a European patent in all participating EU member states, in which the patent has been validated, in one single infringement proceeding. The single infringement procedure covering multiple countries is beneficial in cases where the patent is infringed in multiple countries by the same product, or if the different steps of a process patent take place in several different countries, or if the components of a complex machine are produced in several different countries. In such cases the patentee can enforce its patent against the infringer(s) in one procedure, avoids diverging decisions and reduces the effort to coordinate multiple parallel proceedings in several countries. On top, it may even be less expensive than running infringement proceedings (and counterclaims for revocation) in multiple countries. To sum up, if a European patent is validated and will likely be infringed in several (in particular 4 or more) countries, this is a candidate to stay in the UPC system.

3. Competitor is based in country with slow court proceedings

The UPC also gives the option to enforce European patents in countries where the courts are relatively slow or less experienced in patent infringement proceedings. The territory of the UPC also covers countries with very few reported patent infringement cases, where the national courts have little experience in patent matters and where for this reason the result of proceedings seems less predictable, such as Bulgaria, Slovenia, Portugal or the Baltic states. Also, the UPC systems aims to provide a directly enforceable first instance judgment within around one year. This is significantly faster than the national courts in a number of the participating UPC member states. Therefore, if your competitors act in countries with less experienced national courts or with slow court proceedings and your European patent is validated in these countries, you should consider staying in the UPC system, at least with a couple of your European Patents.

Authored by Anna-Katharina Friese-Okoro and Christian Stoll.