Forum Shopping and the Unified Patent Court: Choosing Among UPC Divisions and National Courts, Key Considerations

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, May 11, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide patent counsel on the new EU Unitary Patent System and the Unified Patent Court (UPC). The panel will discuss the key considerations for counsel when determining whether to file in the national courts or in the UPC, and if in the UPC, in which division to file. The panel will discuss the pros and cons of the different options and offer advice on best practices for selecting a forum or multiple fora (forums) within or outside the UPC.
Faculty

Mr. Bouvet has more than 20 years of experience in patent, trade secret, and plant variety rights litigation and is listed regularly among the best patent lawyers in France. His track record in enforcing and defending patents, for start-up or international groups, is significant. Mr. Bouvet has worked as lead trial counsel on high-profile matters in almost all fields of technology, including life sciences (drugs, biotechnologies, diagnostics, medical devices), chemistry, and electronics, as well as transportation, construction material, mechanics, consumer products, and leisure goods, most of them with a cross-border dimension. He is a member of the International Association for the Protection of Intellectual Property, Rhône-Alpes Group for the Protection of Intellectual Property ( former president), the European Patent Lawyers Association, and the French association of industrial property litigators. He is an administrator of Centre Paul Roubier, a research and training organization in industrial property law.

Mr. Naumann and his team handle litigation, arbitration, advisory and transactional work with respect to patents, trademarks, copyrights, designs, neighboring rights, image rights and trade dress. His media work includes French media regulations, motion picture production, distribution and merchandising, talent contract negotiation and collective bargaining, anti-piracy and enforcement for a number of studios and television stations. He regularly taught courses on French and European intellectual property litigation at the University of Strasbourg, and at the Swiss Federal Institute of Technology in Zurich. In addition, Mr. Naumann is a regular contributor to trade and legal publications, and frequently speaks at conferences. He is admitted to practice in France and is an independent neutral for the World Intellectual Property Organization, particularly for domain names.
Description
Institution of the Unified Patent Court (UPC) in June 2023 brings more forum options from which patentees can choose to bring patent infringement actions in the EU.
One of the big advantages of the UPC is the possibility to have one judgment in a single court proceeding that can then be enforced in many jurisdictions. A single proceeding should mean lower costs and a shorter time compared to being involved in several matters in multiple jurisdictions. However, this also means that one judgment can nullify a patent in multiple jurisdictions.
Further, not all EU member states participate in the UPC system. As a result, litigation in the national courts may be the necessary option against certain infringers. It is critical for litigants to weigh the pros and cons before filing.
Listen as our authoritative panel of patent attorneys examines the key considerations for patent counsel when determining whether to file in the national courts or in the UPC, and if in the UPC, which division in which to file. The panel will discuss the pros and cons of the different options and the limits of jurisdiction. The panel will offer best practices for addressing the issue of forum shopping and the UPC.
Outline
- Where to file and when: key considerations
- UPC and which division
- National courts
- Pros and cons of the different options
- Limits of jurisdiction
- Best practices
Benefits
The panel will review these and other vital issues:
- What are the benefits and risks of filing lawsuits in the UPC?
- What are the limits of jurisdiction of the Courts of First Instance of the UPC?
- What key considerations should companies and their counsel keep in mind when determining whether to file an infringement action in the UPC or in the national courts?
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