Three parallel patent systems coming to Europe

The new European patent system, made up of the EU patent and the Unified Patent Court (UPC), is set to begin operating by 2017. Though in some countries the UPC contracts still need to be ratified as the final act, few experts believe that this process could still fail. The key details have been hammered out: Düsseldorf, Hamburg, Mannheim and Munich have been chosen as the German local divisions. The yearly fees, as well as the opt-out fee, will be low, and therefore attractive to companies. The selection and training of qualified judges is moving along nicely. The rules of procedure for the UPC were put in place in October. So company experts and lawyers are devoting more and more attention to the new system, which will coexist alongside the national patent systems and the so-called European “bundle” patent as part of the European Patent Convention agreement. This means that patent law in Europe will become more complicated, but will also offer plenty of tactical opportunities in terms of litigation. Chemicals, consumer goods and pharmaceuticals corporates are the potential users. The system is expected to be especially attractive to NPEs, because of the possibility of a pan-European claim for injunction. As NPEs are currently experiencing unfavourable conditions in US courts, they are increasingly switching to German courts, which are thought to be sympathetic to plaintiffs. Large series of proceedings are being conducted in Germany by Marathon, Saint Lawrence Communications and Unwired Planet – with success.

Major grievances at the EPO

The European Patent Office (EPO) is set to play a central role in the new European patent system. But there was a great stir under its president Benoît Battistelli: the office administration and parts of the workforce are said to be at serious loggerheads, not only because of social reforms, but mainly because of the Office’s approach to disciplinary proceedings. On top of this, a debate about the lack of independence of the boards of appeal is raging. A reform proposal by the EPO is now on the table, but its implementation will be delayed until the end of the year.

EU patent: more competition for German firms

Before the end of 2015, the two patents heavyweights Hoyng Monegier (Netherlands, France, Spain) and Reimann Osterrieth Köhler Haft (Germany) are set to merge. Hoyng ROKH Monegier will be a 100-strong IP colossus, whose lawyers could play a huge role at the central UPC locations. Another important event was the spinoff of the entire Düsseldorf IP team from Preu Bohlig & Partner. This is one of the hardest-hitting teams of litigation lawyers, and will be launching as Kather Augenstein in January 2016. These are the most striking examples of the dynamism with which German patents firms are preparing for the new patent system and the challenges it will bring in terms of pan-European competition: a multitude of firms are reacting by opening offices, hiring partners, ramping up their headcounts or branching into additional areas of technical expertise. Every firm has its own challenges to tackle. These can be summarized as follows, based on the type of firm:

▹ Litigation teams in internationally merged full-service firms like Bird & Bird and Hogan Lovells: building up mixed litigation expertise by bringing in patent attorneys where necessary; branching into the US market to secure their own contacts among US companies; balancing the interests of the strong national patents teams, esp. between the UK and Germany.

▹ Litigation teams in independent German boutiques like Rospatt Osten Pross and Wildanger Kehrwald Graf v. Schwerin & Partner: building up mixed litigation expertise by closer cooperation with patent attorneys where necessary; cooperation with litigation teams in other European locations, esp. Amsterdam, London and Paris; building on direct connections to Asian and US companies; ramping up teams for technically complex and time-consuming UPC proceedings.

▹ Litigation teams in independent German full-service firms like Gleiss Lutz and Hengeler Mueller: building up mixed litigation expertise by closer cooperation with patent attorneys where necessary; cooperation with litigation teams in other European locations, esp. Amsterdam, London and Paris; ramping up teams to cope with the major UPC proceedings ahead; asserting their own strategic goals in a full-service partnership.

▹ Large mixed firms with a strong patent attorney branch like Vossius & Partner and Hoffmann Eitle: building up visible litigation expertise in several technical fields; ramping up teams to cope with the major UPC proceedings ahead; branching into more German locations; branching into other international markets with their own offices or in close cooperation with local firms.

▹ Pure patent attorney firms like Manitz Finsterwald & Partner and Betten & Resch: building up mixed litigation expertise by closer cooperation with litigation firms where necessary; cooperation with patents firms in other European locations, esp., Amsterdam, London and Paris.

The new system also means that all patent firms in Europe need to improve their language skills for proceedings conducted in English, widen their service portfolios and adapt their cost models, as the various European models will be harmonized in the UPC – with advantages and disadvantages for each country.

IP rights in Germany

Technical protection rights are of vast importance for companies: patents and registered designs contribute to a company’s economic development. In Germany, two professional groups provide advice on this. Patent attorneys perform what is known as patent prosecution: they file patents and register designs, as well as conducting official proceedings. Lawyers are in charge of litigation in infringement proceedings. Both professional groups litigate in nullity suits and provide advice in connection with protection right strategies and invention rights.