In your view, what outstanding questions remain in UPC litigation that the Conference has the potential to address?
The UPC did not adjudicate a FRAND rate yet, but I have good hope that in about a year we will see the first decisions. That would be a game changer for global SEP litigation and would bring us at par with the US, UK and China. We have also not seen Arrow declarations yet at the UPC. In my view the UPC system allows for the Central Divisions to be instrumental in clearing the way strategies for generics, and for those strategies to be effective these companies will need Arrow’s to be available, also in relation to Opted-out European patents that can still be opted back in.
What qualities or skills do you believe distinguish a successful litigator before the UPC compared with national patent courts?
I think there are different ways to be a successful UPC litigator, but in my view you always need to be able to rely on a dedicated team of talented litigators. The workload can be really high if you have more cases to manage, and the deadlines are sometimes challenging, especially if you have several deadlines in the same week. I also believe that strategizing has become even more important before the UPC then it is before national courts. The stakes are higher, there are more variables and unknowns, and often these cases are part of a global campaign. It is only the aggregated result that matters, and you need to be in sync with the overall strategy at all times.
In your opinion, what remains the biggest uncertainty or risk for litigators operating in UPC space?
The objective of the UPC is to be a self-financed system, and for me that has always been an existential threat for the UPC in the long-term. I do understand that it will provide the Court with more independency and flexibility to make operational decisions. And that is good and maybe even crucial in the start-up phase to get out of the gate. But on the long-term I find it difficult as a principle that a system has a build-in self-interest in collecting higher court fees. I think there is a risk that the UPC will be primarily used by only the biggest companies in the world and by those companies whose business it is to monetize their patents, which is a good thing, but we should not forget about SME’s. It is actually the second consideration of the UPC Agreement that the UPC is aimed to solve the problems in particular for small and medium-sized enterprises which have difficulties to enforce their patents and to defend themselves against unfounded claims. I am afraid that the current system is already too expensive for SME’s, even though there is a discount available for those companies. At Católica Global School of Law we are starting up a research study to evaluate the position of European SME’s within the UPC. The costs of the system will be a part of the research.
How would you advise a patent holder considering whether to bring a case in the UPC versus a national court now (or in the near future)? In your opinion, are national courts still relevant within the Contracting Member States?
The UPC is the number 1 patent court in Europe. No doubt about it. Especially for internationally operating companies it does not make sense to go country by country to obtain injunctions. There are of course circumstances where it does add value, but those cases are the exception. For me national litigation can definitely be an add-on for a global campaign. And of course some cases do not require a European wide solution. Costs can also be an issue for SME’s, so – even though it is contrary to the objective of the UPC – they could decide to also stick with national litigation.
Given global parallel litigation for instance in telecom, how should UPC strategies align with proceedings in the U.S, UK, etc. to avoid conflicting outcomes for clients?
The teams working on these global campaigns have to be closely aligned especially with respect to the FRAND issues in the cases. Clients in this field typically have great in-house lawyers coordinating the cases and they demand from external counsel to be in-sync with the strategy and always to keep in mind the overall objectives. External counsel from different firms should work together as one team with trust and respect, because only then we can bring our clients the results they need and avoid strategical mistakes.
Interviewed by Paula Terzini Leite
