EPO not moved by "change of venue" plea

Have you ever wished that your oral proceedings before the European Patent Office were held somewhere more convenient? If so, take note of Case T 1142-1112 Polyethylene composition for injection molding with Improved stress crack/stiffness and impact resistance relationship/Borealis Technology Oy, a Technical Board of Appeal ruling of 8 April 2014 . According to the decision's Catchword:

The question of the venue of oral proceeding is a matter of organisational nature which belongs to the management of the Office pursuant to Art.10 (2) EPC.

When not acceding to a request for holding oral proceedings in Munich instead of The Hague, the Examining Division does not take a decision but only expresses the way the EPO is managed.

Consequently, that issue is not subject to appeal, nor can the Board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal.

The applicant, Borealis, was based in Linz (in Austria, but a convenient train ride from Munich), and its attorney was based in Munich, which would have made Munich a more convenient place from its point of view. The EPO was literally not moved. At 2.3.1. the Board said:

"If the Examining Division may decide on the location of oral proceedings on a case by case basis, then it would be obliged to justify its decision to refuse a request for oral proceedings in Munich on the basis of the provisions of the EPC, of the Rules or of the Guidelines and in consideration of the reasons given by the applicant. The reasoning on this issue would thus be part of the contested decision which would therefore be subject to appeal".

This blogger thinks that Borealis and others can face a lot more travel in time to come, with the new unitary patent system and unified patent court ...

When it's too late to seek a stay ...

Kennametal Inc v Pramet Tools SRO and Associated Production Tools Ltd [2014] EWHC 1438 (Pat) was decided in the Patents Court, England and Wales, back at the beginning of April, but this blogger hasn't had time to deal with it earlier.

In short, Kennametal applied to stay an order revoking a patent pending the outcome of proceedings to amend it in the European Patent Office (EPO). The UK patent had been held invalid and Kennametal did not apply for permission to appeal that decision. However, Kennametal submitted that the court should follow the recent Court of Appeal decision in Samsung Electronics Co Ltd v Apple Retail UK Ltd [2014] EWCA Civ 250 [noted by the IPKat here], in which that court adjourned the hearing of an appeal against a UK judgment pending the conclusion of an amendment application that had been made to the European Patent Office (EPO). No, said Pramet: the reasoning in Apple did not apply, because in that case there had been concurrent proceedings in the UK and the EPO -- which was not the case here.

Henry Carr QC, sitting as Deputy judge, refused the application, finding that the situation in Apple was completely different. In this case, the UK revocation proceedings were dead and buries: there had been a final judgment and it was not the subject of an appeal. No attempt was made to seek these amendments in the course of those proceedings and it there was no justification for awaiting the uncertain outcome of the EPO proceedings before revoking the patent.

Priority and indirect infringement of second medical use claims: when the Sun shines in the Netherlands

Last month, at the International Trademark Association (INTA) Meeting in Hong Kong, this blogger had the pleasure of an encounter with Jaap J.E. Bremer and his colleague Marleen van den Horst (both of the Dutch firm of BarentsKrans N.V.). There, in that undoubtedly trade mark-friendly environment, we discussed a case that Jaap and Marleen were involved in before the Provisions Judge of the District Court, The Hague, regarding indirect infringement of a second medical use patent and the validity of priority claims (among other things). The decision in this action has since been handed down and Marleen and Jaap have kindly treated PatLit readers to the tale of its outcome. As Jaap explains:

Zoledronate

"The case concerns Novartis’ patent EP 1 296 689 for a “Method of administering bisphosphonates”. It claims, inter alia, a dosage regime (2-10 mg once yearly) of the active substance zoledronic acid / zoledronate, administered intravenously for the treatment of osteoporosis. The Dutch litigation between Novartis and Sun Pharmaceuticals runs parallel to the case in England and Wales between Hospira & Generics UK (Mylan)/Novartis that was reported here on the IPKat weblog not too long ago. Marleen and I represented Sun.

Sun had obtained a marketing authorisation for generic zoledronate for the treatment of Paget’s disease and osteoporosis. The use of zoledronate for the treatment of Paget’s disease was not patent-protected. Sun had requested that the indication osteoporosis be removed ("carved out") from the Summary of Product Characteristics and patient leaflet of its product. In October 2013, Sun participated in a public tender by Dutch health insurance company VGZ, which it won. VGZ's tender conditions did not allow specification of the indication.

Novartis alleged that Sun's generic product (in)directly infringed EP 689. It started preliminary injunction proceedings against Sun, seeking an order (a) to stop it selling generic zoledronic acid to the extent that Sun knew or had reasonable grounds to suspect that its product would also be used to treat osteoporosis, and (b) to stop Sun participating in tenders, unless those tenders would allow designation of the product for Paget's disease only.

Sun disputed the allegations of (in)direct infringement and the orders requested by Novartis. In addition, Sun argued that EP 689 was invalid for lack of novelty over the Reid publication as Sun contested that Novartis was entitled to its priority claims. The PI judge of the District Court in The Hague held that the priority right was most likely invalid, since the priority document US 689 did not directly and unambiguously disclose the combination of intravenous use and the dosage range of "2 up to about 10 mg". The PI judge referred to the decision of the courts of England and Wales. The PI judge found that there was a serious, non-negligible chance that the patent would not survive invalidity proceedings on the merits (the validity test in Dutch preliminary injunction cases), rejected Novartis’ claims and ordered Novartis to pay Sun's costs The PI judge did not rule on the other grounds of invalidity, as presented by Sun, nor on the issue of (in)direct infringement".

Thanks to Marleen and Jaap, we also have an unofficial English translation of the Dutch decision of 12 May 2014. You can read it online here or download it here.

U.S. Supreme Court Decides Alice v. CLS Bank: Computer Patents Ineligible Unless Claims Recite Non-Conventional “Inventive Concepts”

[This post was written by David, and posted by Stefano on his behalf]

This morning, a unanimous U.S. Supreme Court ruled that claims directed to computer-implemented methods and related systems are not eligible for patenting under 35 U.S.C. § 101 unless they contain a non-conventional “inventive concept,” and that a generic reference to a general purpose computer, or even “purely functional and generic” hardware components, does not make an otherwise ineligible invention patentable. The complete opinion is here.

Although the decision (by Justice Thomas) falls short of a bright-line test for patent eligibility, it does elaborate on the two-step analysis that should be applied.

First the Court must decide whether the subject matter claimed is directed to a patent-ineligible law of nature, natural phenomenon, or abstract idea. The Court reasoned that the intermediated settlement concept claimed in the Alice patents was not meaningfully different from the concept of risk hedging found to be ineligible in Bilski. Like the Court in Bilski, however, the Court avoided defining “abstract idea,” instead stating that “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Slip op. at 10.

Second, if the claims are directed to an ineligible concept, then the Court framed the second step based on Mayo’s “inventive concept” requirement:

If [step one is met], we then ask, “[w]hat else is there in the claims before us?” [Mayo,] slip op., at 9. To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Id., slip op., at 10, 9. We have described step two of this analysis as a search for an ‘inventive concept’ - i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. slip op., at 3.

To apply this second step, the Court noted that the claims must recite some element that is an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent eligible invention. On this point, the Court cautioned that merely reciting a generic computer, or even conventional computer components or function, is inadequate. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement’ an abstract idea "on … a computer," that addition cannot impart patent eligibility.” Slip op. at 13, quoting Mayo.

Applying the two-step test to Alice’s claims, the Court found them to be ineligible. First, the method claims were addressed to the abstract concept of settlement intermediation. Second, although the claims recited computer-implemented steps, those steps (alone or in combination) were “purely conventional.” The Court concluded that the claims did not improve the functioning of the computer, or reflect an improvement in any other technology or field. “Instead, the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Slip op. at 15. Therefore, the claims were ineligible for patenting.

Alice’s system claims fared no better under the two-step test. Although the system claims recited specific hardware components (such as “data storage unit” and “communications controller”), the Court dismissed those elements as “purely functional and generic.” Slip op. at 16. As a result, the elements did not provide meaningful limitations, and only linked the concept to a particular technological environment – in this instance implementing the concept using a computer. The Court reasoned:

Put another way, the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer ;the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] . . . against” interpreting §101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Mayo, slip op., at 3.

As a result, the system claims were also ineligible.

Justice Sotomayor, joined by Justices Breyer and Ginsburg, concurred in the result, noting their belief that business method patents are ineligible per se.

Consultation on UPC rights of audience: it's time for a discussion

With apologies to IPKat readers for the cross-posted subject matter (see the first item on today's Wednesday Whimsies, here), there's a storm brewing in the United Kingdom over who will have rights of audience before the Unified Patent Court (UPC) and what sort of training they will have to be put through if, despite their professional training and expertise, they are not technically "lawyers".

Following Darren Smyth's post yesterday on this subject on the current consultations, we learn from Vicki Salmon that

The Chartered Institute of Patent Attorneys (CIPA) and the UK Intellectual Property Office (IPO are holding a joint seminar to discuss this consultation on Wednesday 2 July 2014, in CIPA Hall. Registration begins at 4.30 in anticipation of a 5 pm start, with drinks and networking provisionally to start at 6.30 pm. There will be no charge. Although this has been planned for a while, it could not be advertised until the new draft was published and the consultation open -- so apologies for the short notice. The event will be recorded and that will be made available afterwards to those who could not attend.

The panel will include Mr Justice Birss and a representative from the IPO. Vicki Salmon will be chairing. To book your place, click here.

This blogger wonders the current consultation on rights of audience before the UPC is being discussed in other jurisdictions within the EU and, if so, how they are shaping up.  Does anyone know?

UPC ratifications: how many so far?

This blogger is getting a bit confused. On 26 May the European Commission announced that

Once the Danish Parliament ratifies the Agreement, Denmark will be the fifth Member State to ratify it (after Austria, Belgium, France and Malta). Ratification by thirteen Member States is required for the Agreement to enter into force.

This information was duly reported on this weblog.  Subsequently he has received two media releases from his friends at law firm Rouse. The first informed him yesterday that

Sweden has become the third EU Member State (behind Austria and France) to ratify the UPC Agreement.

A little later, from the same firm, this blogger learned that

Belgium has crossed the UPC ratification finish line hot on the heels of Sweden. The Belgian Parliament passed the law authorising ratification of the UPC Agreement just before the national elections in May 2014.

What has happened to Malta? Is it still there ...? Or should it have never been listed in the first place? Does anyone know.

Litigation training for newly-qualified UK patent attorneys: latest news

If you can't get interim injunctive relief through the courts,
it's handy to know what other options are available ...

This morning the IPKat posted a guest piece from Vicki Salmon, Chartered Institute of Patent Attorneys (CIPA) council member and Chairman of the litigation committee, on compliance by newly-qualified patent attorneys in the United Kingdom with the requirement to take a basic litigation skills course and to obtain required certificate within three years from going on to the register.

Vicki's post, which is not reproduced in full here, summarises the steps taken by CIPA to facilitate compliance and reflects both the degree of interest in this issue and the degree of uncertainty that persists with regard to it.

In the meantime, CIPA plans to re-run its course for litigating in the Intellectual Property Enterprise Court, England and Wales.  The course takes place on 2 September 2014 followed by a long weekend (from Thursday morning to mid-afternoon Saturday) on 18-20 September at Missenden Abbey.  Advance information is available here and booking forms will be available soon. While the course is open mainly to CIPA members, a few spaces will be available to non-members.

Limitation and Amendments of claims during litigation: a conference

From Anna Maria Stein (partner, Franzosi Dal Negro Setti, Milan) comes news of a conference on claim limitation/amendment during patent litigation. This event will be held on June 27 and 28 at the Aula Magna of the Court of Milan.  Says Anna Maria

"In particular, laws and procedures of five countries (Germany, France, Italy, the Netherlands and the UK) will be compared. The solutions at the European Patent Office (Articles 105a and 123 EPC) will also be considered. We would like to share with European colleagues a general overview of the problem. In fact the various systems present non-irrelevant elements of divergence, so that a unitary title of protection may assume a different geometry when litigated in various countries".

This is the link to the website of the Court of Appeal of Milan where external attorneys may register: http://www.ca.milano.giustizia.it/formazione_magistrati.aspx?iscriviti_incontro=800 . No fee is due for the registration and participation at the two days conference. While the registration form is in only in Italian, it is quite simple -- and Anna Maria is available here if you need support, information and other details. Anna Maria's firm also has a web page dedicated to the conference, with the updated programmes and listing a set of questions in order to collect information on this matter from various countries.

I have taken the liberty of cutting and pasting the contents of this promising events from the attachments to Anna Maria's email:

Friday, June 27, 2014

Aula Magna “Emilio Alessandrini and Guido Galli” – Court of Milan

 

TRAINING AND UPDATING COURSE IN COMPARATIVE AND EUROPEAN LAW

 

-LAST INTERDISCIPLINARY SESSION-

 

EUROPEAN PATENT: A VARIABLE GEOMETRY RIGHT?

Limitation and Amendments of claims during litigation.

 

(In Italian and English with simultaneous interpreting)

 

8:30                     Registration

9:00                     Greetings

Baldo Marescotti, Subst. President Court of Appeal, Milan

Roberto Bichi, Subst. President Court of Milan

9:30                        Definition of the terms of discussion: different problems connected to patent amendments and limitations (chaired by dott.ssa Marina Tavassi)

                                   - Amendments and limitations in the European and national systems; during patent granting proceedings and after the patent is granted (Professor Mario Franzosi, Visiting Professor, University of Washington - 20')

- Amendments and limitations in the European system (Heli Pihlajamaa, Director EPO - 20')

- Amendments and limitations during patent grant proceedings: the Italian law (Professor Giuseppe Sena; Emeritus Professor I.P. law, Milan State University- 20')

10:45                        Amendments and limitations in the national systems – Part I (chaired by Rt Hon Robin Jacob)

- The English experience: Rt Hon Robin Jacob (Judge in the Court of Appeal of England and Wales - 20') + Penny Gilbert (London - 20')

- The German experience:  dr. Klaus Bacher (Richter Bundesgerichtshof - 20') + dr. Thornsten Bausch ( Munchen - 20')

- The French experience: Jean-Christophe Galloux, Président IRPI, Professeur Panthéon-Assas, Paris- 20') + Darius Szleper ( Paris - 20')

- The Dutch experience: prof. Jan Brinkhof, Professor Utrecht University ; Former Presiding Judge of the Court of Appeal The Hague - 20') + John Allen ( Amsterdam - 20')

13:15                        Break

14:30                        Amendments and limitations in the national systems – Part II -The Italian experience chaired by prof. Adriano Vanzetti (Emeritus Professor Intellectual Property, Catholic University, Milan- 20') - dott. Claudio Marangoni (Judge – Tribunal of Enterprises, Milan- 15'); dott. Umberto Scotti (President, Tribunal of Enterprises, Court of Turin- 15'); dott. Gabriella Muscolo (Member of Italian Competition Authority - 15'); Luciano Bosotti, President I.P. Counsels - 15'); prof. Giovanni  Guglielmetti (I.P. Professor, State University Milano-Bicocca- 15').

16:15                        Discussion       

17:45                        Final summary: Marina Tavassi (President of the Specialized Division for Enterprises of the Court of Milan - 20)

Sabato 28 giugno 2014

9,30      illustrazione del caso (Mock Trial) e presentazione delle modifiche proposte alle rivendicazioni del brevetto

10,00     difesa di parte attrice: giustificazione delle modifiche

10,40     difesa di parte convenuta: contestazione delle modifiche

11,20      pausa

11,35      camera di consiglio: un collegio costituito da tre persone in funzione di giudici

in contemporanea il pubblico, diviso in gruppi di lavoro, ricerca le possibili soluzioni

12,30     lettura della decisione e dibattito

13,00     fine lavori 

This Convention is aimed to magistrates and judges in ordinary training, judges and justices of the peace.

The conference is also open to the participation of lawyers (up to a maximum of 150), as well as to students of specialization advocate schools (maximum of 30).

For organizational reasons, the judges who wish to attend the meeting are asked to subscribe online through the website www.corteappello.milano.it, in the lower right part of the home page at “Formazione Decentrata Magistrati Incontri di Studio Iscrizioni e Materiali.”  Participants will receive a certificate of attendance.

The meeting is part of the initiatives which provide the provision of credits by the “Consiglio dell’Ordine degli Avvocati” under the Rules of the Consiglio Nazionale Forense concerning the Professional Training.

For this purpose, 150 seats are reserved to the Board of the Bar Association of Milan. Entries must be made through the system”RICONOSCO”.

If you have any further questions about this event, please contact Anna Maria here

Supreme Court Rejects Federal Circuit Standard For Indefiniteness, But Precise Rule Remains Elusive

In a pair of unanimous decisions issued June 2, 2014, the U.S. Supreme Court rejected Federal Circuit rulings addressing patent validity and infringement. However, in keeping with its recent practice, the Court refrained from articulating its own concrete tests, leaving to the lower courts the task of applying relatively vague concepts. The Court's treatment of the standard for claim definiteness is illustrative of this approach.

In Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, the Supreme Court considered the standard for claim indefiniteness under 35 U.S.C. § 112(b). The Federal Circuit had applied an extremely high standard for defendants challenging claims as invalid as indefinite, holding in earlier cases that an offending claim term was not invalid if it remained “amenable to construction” and was not “insolubly ambiguous.” See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The Supreme Court rejected that test as too lax:

Those formulations can breed lower court confusion, for they lack the precision §112, ¶2 demands. It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” against which this Court has warned.

Slip op. at 12 (citation omitted). Instead, the Court applied a test based on the ability of a person of ordinary skill in the art to grasp the scope of the claims:

To determine the proper office of the definiteness command, therefore, we must reconcile concerns that tug in opposite directions. Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270 (1916).

Slip op. at 11 (emphasis added). Instead of applying the new test to the disputed claims in Nautilus, the Court remanded to the Federal Circuit. A copy of the Court's opinion is HERE.

The lower courts, no doubt, will need to fashion a workable rule applying the new “reasonable certainty” concept.  How much information is needed to be enough to "inform ... about the scope of the invention"? What is "reasonable certainty"?  Can a person skilled in the art take advantage of the teachings of the art in interpreting claims? The Court's decision creates a flexible standard, as is required to balance the competing policy goals impinging on the definiteness question. But the standard needs significant refinement before it is of any practical use.

Coincidentally, the USPTO announced the launch of its Glossary Pilot Program on the same day Nautilus was decided.  The pilot is designed to enhance claim clarity in the specification of software-related patent applications by encouraging the use of glossaries in applications. The program allows applicants to petition for admission to the pilot program, which will last for 6 months or until 200 applications have been accepted. Applications in the program "must include a glossary that is placed at the beginning of the detailed description portion of the original specification of the application, identified with a heading, and presented on filing of the application. The glossary should include definitions that will assist in clarifying the claimed invention, creating a clear application file wrapper history, and must comply with all of the requirements" of the pilot program. Application accepted into the program will receive "special" status. Full details of the pilot program are posted HERE. 

Danes vote to ratify the Unified Patent Court agreement

But 5-0 is not enough ...

Via a European Commission media release comes news that the Danes have voted in a referendum in favour of joining the Unified Patent Court (UPC).  This decision empowers the Danish Parliament to ratify the UPC Agreement.

Denmark will be the fifth member state to ratify it (after Austria, Belgium, France and Malta). However, the UPC will not come into being untl the UPC Agreement has been ratified by 13 European Union Member States (which must include Germany and the UK in addition to France).

Germany has indicated its willingness to ratify the agreement, which it proposes to do so later this year. The UK expects to ratify the agreement before the end of the current parliament in 2015, following passage of the Intellectual Property Act 2014 which makes provision for that eventuality.

UPC: suddenly more popular than we thought?

Here's a surprise press release from Allen & Overy, published today and discussed by the IPKat and Merpel here.  The press release is reproduced in full below, with some comments in red:

"Research reveals growing business support for UPC – crown jewel patents opted in; move to Europe for major patent disputes

LONDON – Research published by Allen & Overy today demonstrates surprising support for Europe’s hotly debated Unified Patent Court, with almost three-quarters (74%) of those responsible for overseeing preparations for the new system expecting it to be positive for their company – and only 15% expect it to have negative consequences for them.

While on the big question of whether to opt in or opt out of the new system during its seven-year transition period, the majority of respondents are undecided on the bulk of their portfolio (68% on average), close to half (49%) of those surveyed said they would definitely opt in at least some of their patents, while only 15% say they would definitely opt out some.

Crucially, where businesses have made a decision to opt in, about 24% of their portfolio on average, they are deciding to opt in their most valuable, or crown jewel, patents. This suggests that, where it matters most for business, they will opt in.

As one Dutch head of IP strategy commented: “The economics of a single enforcement action outweighs the risk of Europe-wide invalidation.”

As this statement and the research suggest, despite the faltering reception the new system has received from companies across the globe, its impact is likely to be significant. The UPC will offer patentees the ability to obtain broader remedies than those currently on offer in the U.S., with a larger customer base impacted and injunctions that are easier, cheaper and quicker to obtain. Costs are estimated to be at least five times lower than in the U.S.

These advantages alone mean there is likely to be a shift towards Europe’s UPC as a forum of choice to rival the U.S. for major patent disputes. This is further supported by the majority of respondents indicating they will file unitary patents, as opposed to classic European or national patents, under the new system.

Despite its potential impact on business, the report also highlights an alarming lack of engagement among senior management on the UPC. Only 13% of those responsible for preparations for the new regime say their senior management are ‘fully engaged’ on the issue and appreciate the potential implications. One consequence of which could see businesses lose exclusivity for their products, or worse still, have their business or products locked out of the entire continent.

The scale of the change taking place means that companies cannot prepare for it overnight. If they don’t engage strategically with the changes now, they could find their competitors dragging them into UPC or national patent litigation on their own terms.

While the decision on what to do with a companies’ most valuable patents seems clear, what to do with a business’s less valuable patents is anything but. The 68%, on average, of their portfolio that business are still undecided on is largely made up of their secondary patents. Lack of clarity on costs is cited as the main barrier to being able to make decisions according to two-thirds (67%) of respondents. Only when this is clarified will businesses be able to undertake a proper cost-benefit analysis on their less valuable patents and whether it is more economically beneficial to opt them in or out".

At this point, the statistics stop and the comment begins:

"As well as clarity on costs, there is a pressing need to clarify a few areas where interpretations of the rules differ. This risks leaving companies with dangerous gaps in the understanding of the strategic implications of their decisions [The words 'risk', 'pressing need' and 'dangerous gaps' are interesting here: would the level of willingness to commit 'crown jewel' patents or to express confidence in the new system have been the same if these points had been addressed to respondents before they completed the survey? Or would they consider that the new system merely replaces one set of risks and uncertainties with another, exchanging 'known unknowns' for 'unknown unknowns'?]. In particular what happens to patents that have not been formally opted out of the UPC? These “opt-in orphans” can be litigated during the transitional period in either the national courts or the UPC. But it is not clear what happens after proceedings have been completed and whether national court proceedings could effectively opt them out of the UPC for the life of the patent. An extreme example would be a pharmaceutical generic company launching a revocation action against, for example, the Latvian part of a blockbuster patent. The company could then withdraw the action, having effectively forced the patentee out of the UPC system. This goes entirely contrary to the original intention to leave as many patents as possible in the system [Is this a temporary evil, as it were, which it's worth tolerating on political grounds for the sake of post-transitional period gains, or is it more serious than that?]. Another interpretation of the rules could also see the possibility of concurrent litigation in both the UPC and national courts which could lead to contradictory decisions if, for example, a national court upholds a patent and the UPC revokes it. This is the very type of clash the UPC is designed to avoid [but it's quite akin to the sort of contradictory judicial decision-making which patent owners and their foes have lived with since the European patent came into our lives: it's undesirable, certainly, but the fact is that most businesses have managed to cope]. Greater clarity is urgently required for these “opt-in orphans”.

Commenting, Geert Glas, head of Allen & Overy’s IP practice said: “Companies cannot afford to wait until they have an absolute and final answer to every question [Never was a truer word spoken: we still await absolute and final answers to many questions arising out of the now-mature Community trade mark system ...]. There is now evidence enough for them to decide whether or not to use the system [Unfortunately much of this evidence, being speculative, is of little probative value -- and may spark off different evaluations depending on the industrial sector concerned and whether it's at its green field stage or taping out into a series of incremental improvements over a long-established technology]. Time is running out before the UPC becomes active. Companies can’t afford to hesitate over one of the bigger strategic decisions their organisations will face for many years."”