Unified Patent Court: Protocols on Privileges and Immunities and on Provisional Applications
Strategic Considerations for U.S. Applicants and Patentees

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, February 17, 2022
- 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 Unified Patent Court (UPC) and the recently approved protocols associated with the UPC. The panel will discuss the fundamental changes so that counsel can prepare for them in the coming months. The panel will also address the implications of Brexit on the UPC. The panel will offer best practices for preparing for the new patent system in Europe.
Faculty

Mr. Wall is a European and UK patent attorney and litigator specializing in the chemical, consumer products, energy, material, mechanical, medical and pharmaceutical sectors. Prior to founding Oxon IP, he was a Partner in major European and U.S. IP law firms, and before then in-house patent counsel for some of the world’s largest U.S. and European multinationals. He regularly represents clients in Opposition and Appeal proceedings before the European Patent Office as lead counsel in a wide variety of technical areas. He has won numerous defensive and offensive oppositions, including multi-party proceedings, and successful coordination with disputes in multiple jurisdictions such as UK, Germany, US, China, Japan, Korea, and India. Mr. Wall sits on the Chartered Institute of Patent Attorneys (CIPA) Litigation Committee, the Intellectual Property Owners (IPO) European Practice Committee and is President of the European Patent Litigators Association (EPLIT).

Mr. Fox practices intellectual property law with a focus on electronics, telecoms, and software patent litigation. In addition to being qualified as a solicitor, he is also qualified as a European and Chartered British patent attorney, with full rights of audience to appear in IP proceedings at all levels in the English High Court. He is also qualified and admitted as an attorney in New York. Mr. Fox has experience handling multi-national patent litigation. At his previous firm, he was part of the litigation team acting on behalf of Samsung in the Apple v. Samsung mobile phone patent and design litigation in 2012. He also assisted AMSL in its multi-national patent litigation defending against allegations of patent infringement by Nikon in the field of photo-lithography. Mr. Fox has lectured on litigation and IP matters for the European Patent Academy and has been a guest lecturer at the University of London on patent matters. He has also served as a board member of IPReg, the regulatory body for patent and trade mark attorneys in the UK.

Mr. Pors is head of the firm’s Intellectual Property Practice in the Netherlands, based in The Hague. He is also a member of the firm’s Tech & Comms, Life Sciences and Energy & Utilities groups. Mr. Pors’ practice focuses on patents and trade secrets, mainly in electronics and life sciences, but he also handles trademark, copyright and design cases. Mr. Pors has been involved in the legislative work around the Unified Patent Court and the Trade Secrets Directive and he has published extensively on intellectual property. Mr. Pors is a board member of the Dutch IP litigators' association VIEPA and active in various other associations.
Description
Europe is establishing a new centralized patent court system, the UPC, intended to simplify patent litigation throughout much of the EU. Despite the numerous twists and turns, the UPC is now finally expected to go ahead. However, the new forum is not without concerns. Companies operating or planning to do business in Europe need to consider several factors as they navigate the new system.
On Sept. 27, 2021, Germany deposited the ratification of the Protocol on Privileges and Immunities, which confers legal status on the UPC and provides for the privileges and immunities of the court, its judges, and staff. This Protocol went into effect on Oct. 27, 2021. Germany also deposited its ratification of the Protocol on Provisional Application. This was followed by Slovenia, and most recently Austria have confirmed their agreement. This Protocol allows some parts of the UPC Agreement and the UPC Statute to be applied provisionally and is required to prepare the functioning of the UPC.
The UPC will allow coordination of strategy and procedures and provide broader enforcement across the EU in a single action. However, for many, the potential reduction in costs could be offset by the substantial risk of a single central revocation action also with effect across the EU. Companies and their counsel must understand the benefits and risks of the Unitary Patent and the UPC. Now is the time to prepare.
Listen as our authoritative panel of IP attorneys examines the UPC and the recently approved protocols associated with the UPC. The panel will discuss the key changes so that counsel can prepare for them in the coming months. The panel will also address the implications of Brexit on the UPC. The panel will offer best practices for preparing for the new patent system in Europe.
Outline
- UPC protocols
- Privileges and immunities
- Provisional applications
- Implications of Brexit on the UPC
- Strategic considerations for U.S. applicants and patentees with European portfolios
- Preparing for the new system
Benefits
The panel will review these and other vital issues:
- What are the benefits and risks of the UPC?
- What role do the Protocols play in moving the UPC forward?
- What key considerations should companies and their counsel keep in mind as they navigate the new system?
- What steps should patent counsel take to prepare for the UPC system?
- How do UPC revocation actions compare to EPO Oppositions
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