LS&HC Horizons 2023 - Flipbook - Page 29
Hogan Lovells | 2023 Life Sciences and Health Care Horizons | Transactions
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UPC opt-out strategies for licensed European Patents:
be prepared by 1 March 2023
Unitary Patents and the Unified Patent Court
(UPC) are to go live on 1 June 2023. The UPC
system will apply in participating EU Member
States to all current and future European
Patents designated in those states unless
owners exercise their right of opt-out. Life
sciences and health care transactions, where
value, term and license scope are linked to
the strength and coverage of the underlying
patents, could be affected by the UPC’s ability
to centrally revoke patents and grant relief on
a UPC-wide basis.
The UPC system is untested and it remains to
be seen if its benefits will outweigh the strategic
use of national systems for patent enforcement
on a country-by-country basis in participating
EU Member States. Only patent owners can file
an opt-out, therefore licensees should raise optout with licensors now; parties’ positions may
not be fully aligned. Parties should also review
contracts to ensure that they continue to be
fit for purpose following the start of the UPC.
Opt-outs can be filed once the Sunrise Period
starts (planned for 1 March 2023). They must
be filed at the UPC Registry using an online
Case Management System (CMS). Users of
the CMS must be registered and have both a
client authentication and a qualified electronic
signature. Opt-out timing is critical as, after
go live on 1 June 2023, no opt-out may be
exercised if an action is actually pending under
the UPC system.
Penny Powell
Partner, London
Bonella Ramsay
Counsel, London
