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2 October 2015Big Pharma

CIPA Congress 2015: GSK will decide on ‘case-by-case’ basis which patents to opt into UPC

Representatives from the pharmaceutical and engineering industries have said that the decision to opt existing patents into the Unified Patent Court (UPC) will be a strategic decision done on a case-by-case basis.

David Rosenberg, vice president of intellectual property policy at GSK, said he is confident with the current rules of the UPC agreement and is likely to seek protection for the company’s patents across Europe where it is strategically advantageous to do so.

This is despite the fear outlined by Rosenberg that the risk of a patent being knocked out across Europe as a result of a UPC decision is “extremely high”.

Rosenberg, speaking at the Chartered Institute of Patent Attorneys (CIPA) Congress, taking place in London today, October 2, added that the UPC will succeed despite uncertainties from some professionals.

Such caution about opting in was echoed by Richard Duncombe, IP counsel at BAE Systems.

He said: “It is not cost-effective to opt every patent out, but what we will opt in will be done on a case-by-case basis. It is a strategic decision.”

The UPC will mean there will be more “robust” patents, Duncombe added.

The IP industry in Germany is broadly supportive of the UPC, said Johannes Heselberger, partner at Bardehle Pagenberg. But that has come after a shift in attitude over the last couple of years, which Heselberger compared to a “pendulum swinging in both directions”.

Questions remain, however, over the quality of the UPC procedures and judgments.

Heselberger said that the participation of national German judges on a part-time basis provides an “assurance of quality” that the decisions issued will be good for patent owners.

He added that non-practising entities are likely to be attracted to the system, because it is the first time they will have a European-wide forum to litigate in.

Emmanuel Gougé, partner at law firm Pinsent Masons, said French industry is unsure what direction the UPC will go in, but that there is widespread support.

“French business see that they have to be in, but companies with large portfolios are likely to take a year to decide what patents to opt in or out.”

The CIPA Congress runs from October 1 to 2.

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