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Patent Validation Search: Importance at the time of Patent Licensing

Aug 30, 2023 | IPR & Business, Patent

The well-known Android Operating System is a patented product whose patent is held by Google, but smart phone manufacturers such as Motorola, Samsung, HTC, LG, etc are also using it in their products. Similarly, Dolby Atoms, also a patented sound technology, whose patent is held by Dolby Laboratories, is used by service providers and device manufacturers such as Netflix, Amazon Prime Video etc. Ever wondered how? Well, these manufacturing companies are the ‘licensee’ of the patent owners who have licensed their technology to these market players. We will discuss about the concept of patent licensing and related patent validation in detail in this article.

Patent licensing is the process by means of which patent owner grants permission to other party or licensee to use the patented invention for a specific period of time in a particular jurisdiction in lieu of royalty. By granting license to use the patent, the patent owner is able to introduce his patented invention into the new markets through the licensee, who, in most of the cases, is a well-established company. By obtaining a license, the licensee gets to exploit the patented invention in terms of building, marketing and selling innovative products.

The process of patent licensing starts with discussions and negotiations between the patent owner, also called as Licensor and the licensee. Process of arriving at a license fee or royalty may be complicated at times as many factors play a vital role, such as, technical and feasibility of the invention, R&D cost, stage of technology, approvals and compliances for the patented product, market demand, status of patent in India and abroad..

Conducting a legal due diligence of the patent before licensing is an important step and it involves:

  1. Verification of legal status of the patent as well as family patents to confirm if it is a granted patent or not, even though in several cases, licensee may be willing to license the invention at application stage itself.
  2. Freedom to operate search is often performed to confirm if licensee has freedom to manufacture, use, market, sell the patented invention in specific jurisdictions or not.
  3. Prior art search is usually performed to understand strength of the patent. If there is relevant prior art available, this indicates that patent to be licensed is easy to invalidate in court of law.

Invalidation or validation search is a kind of search wherein prior art is compared with the patent to assess the ease or difficulty involved in invalidating the patent. The term ‘Invalidation’ is often used when patent office declares a patent to be invalid as a result of pre/post-grant opposition or revocation of the patent. Before patent is granted and after its publication, there is a chance for third parties to oppose a patent application to prevent it from getting granted on the basis of statutory grounds listed under Section 25 (1) of the Indian patents Act 1970. Likewise, there are statutory grounds for post-grant opposition and revocation of patents also listed under section 25 (2) and Section 64 of the Act, respectively. It is important to note here that the Controller of Patents invalidates the patent only when opposition or revocation petition is filed by the third party (ies). Decision to invalidate the patent is taken by the Controller after reviewing arguments and evidence submitted by both the parties (i.e., opponent and patent owner). The steps and process involved to perform invalidation and validation search are the same but the outcome or opinion may be different. An invalidation search is performed to identify the grounds on the basis of which a patent can be opposed or revoked whereas validation search is primarily performed to find out how strong the patent is compared to the prior art and how strong is it to sustain a litigation. In simple words, we can say that when a search is conducted to validate the claims of a given patent, it is called a Patent Validity search and when it is used to invalidate the claims of a given patent then it is called Patent Invalidity Search. The prior arts which are taken into consideration to perform invalidity/validity search includes patent as well as non-patent literature.

As this search is commonly performed at the time of filing a petition to the Controller of Patents for opposition or revocation of a patent, the search results are really helpful to find out if the patent is strong or weak compared to the existing prior art. This may be useful for the licensee to take right decision with respect to licensing of the patent. If the patent is weak, it may not be able to give competitive advantage to the licensee and it may also prove to be ineffective to block the competitors. In future, if such patent is infringed by the third party(ies), there may be serious issues related to enforcing patent rights.

The ideal time to perform invalidation search is at the outset of the preliminary discussion on patent licensing between patent owner and potential licensee. The results of this search can play a very vital role during negotiation of the terms and conditions of license agreement. However, it is also important to understand that patent licensing is a complex process and in majority of the cases, the agreements are negotiated between relationship between the parties and their preference and hence invalidation search, though critical, is not the only factor that determines the value of the deal.

Conclusion

Invalidation or validation search is helpful to determine strength of the patent to be licensed. If done professionally, it may change direction of negotiations between the parties involved in a potential license agreement., In addition to invalidation search, based on preferences of the parties to the agreement, there may be several other factors responsible to determine deal value and other terms and conditions of the Patent Licensing Agreement, which the author shall discuss in the upcoming article.

Author: Bindu Sharma

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The Ultimate 7 Step Guide for IP Due Diligence

Jul 5, 2023 | IPR & Business

In the contemporary business landscape, Intellectual Property (IP) is emerging as one of the most important assets that a company owns. Intellectual Property is increasingly occupying a central role in any overall business and growth strategy of an organization. By effectively managing and optimizing IP, the organizations stand to derive maximum benefits and gain a competitive edge. However, IP Due diligence is extremely critical to identify the ways IP shall be identified, safeguarded, monetised & enforced.

IP due diligence & its objective

Every business possesses one or the other form of Intellectual Property and most of the times, such IP is either under-utilised or un-identified. Though it may not be required to register all IP assets, it is pertinent or rather crucial to identify it to take decision on whether it is worth registration or not.

Any investigation or exercise that aims to determine the health, validity and value of intangible assets like IP, forms part of IP due diligence. IP due diligence is a set of parameters required to have in a company to ensure that IP:

  1. is not misappropriated or leaked from the company,
  2. is protected in right legal framework,
  3. is brought to the market at right time, either by itself or by licensing it out, and
  4. infringement analysis is done at right time to prevent infringement of third party’s IP rights,
  5. systems & processes are created to monitor unauthorized use of own IP by the third party (ies).

The primary objective if IP due diligence is to realize full value of IP assets by identifying them, take strategic decision about safeguarding them and further formulate a clear roadmap detailing the steps for the effective management.

Steps involved in IP due diligence

The main purpose of IP due diligence is to assess & optimise value of IP and mitigate the risk associated with its loss or infringement. The IP due diligence steps and strategies may be different for each company depending upon area of business, skill set of employees, kind of core IP and jurisdiction, however, this article focusses on the general steps. It is recommended to take expert legal advice to formulate customised steps for effective IP due diligence for your company’s specified needs.

Step 1: “As-is” IP assessment

Before we dig further into IP due diligence, it is crucial to understand and determine the IP that a company owns. Spotting IP and identification of right legal framework in which IP shall be registered is found to be challenging by majority of the organizations. Most of the IP can be registered in the form of patent, copyright, design or trademark. In addition to this, there may be a possibility to protect some form of IPs as trade secret as well. Certain steps like patent/trademark search right in the beginning may be extremely useful to create a stronger IP and give right direction to the R&D efforts. Investigations like patent landscape are helpful to understand global trends related to evolution of the technology.

Step 2: Leakage of IP from the company

Like any tangible form of property, IP also needs protection. However, owing to its intangible nature, sometimes it becomes challenging to take right steps to safeguard such crucial IPs. First of all, one must identify the channels through which IP leakage happens. Most of the times, IP leakage happens through ex-employees, consultants, customers etc, knowingly or unknowingly. Some of the ways to seal these leakage points are as below:

  1. Have stringent agreements with employees, vendors, customers, consultants
  2. Periodic IP sensitization programs in the company
  3. IP Policy detailing security and confidentiality & security clause
  4. Label confidential files as ‘Confidential’
  5. Restrict access to confidential information of the company

Step 3: Strengthening existing IP

Review of literature is an important step in the new product development process because without knowing what is already been done, strong IP cannot be created. The wealth of knowledge available in the form of patents or paper publication can be immensely helpful to create more innovative products and reduce R&D cycle. At the time of new product development, if a thorough patent search is done and expert advice is sought, there may be a possibility for the companies to leverage some of the good patents which are either abandoned or expired or not filed in the desired jurisdictions. However, this shall always be done with expert advice and jurisdiction-based opinion on patent infringement risk.

Step 4: IP protection in right legal framework

Broadly speaking, a company may have IP which may or may not be registered. Invention, design, brand name can be registered as patent, design and trademark respectively whereas confidential information or trade secret can be protected by maintaining secrecy of it. In order to protect confidential information or a trade secrets, clear and stringent processes, policies and practices shall be devised. Some of the examples of trade secret are recipe of Coca-Cola, chicken recipe of KFC etc.  For any information to be qualified as a trade-secret, following conditions shall be fulfilled:

  1. Information shall not be known to the public,
  2. It shall be valuable for business,
  3. Owner should have taken sufficient measures to protect it.

Spotting IPs in a product, identifying the right legal framework to protect it at a right time shall be done by the experts sothat the product is protected in the best possible manner.

Step 5: Infringement risk assessment

IP infringement refers to unauthorized use or encroachment upon the IP rights of a third party (ies), and its consequences can be fatal. IP infringement risk analysis shall be done before the product launch to understand if there is any infringement risk. Jurisdiction specific opinion by the legal expert on IP infringement may be helpful to mitigate the infringement risk. Further, periodic IP audits shall be performed to identify external software downloads.

Step 6: IP commercialization

Creation of IP requires significant investment in terms of time, money, and resources. Every good investment should yield returns and therefore, it is reasonable to say that when companies spend money to create IP, they must explore the ways to recover that investment by commercialization of IP, either on their own by integrating such IP onto their products or licensing it out to other potential partners who may bring such IP in the market.

Step 7: Enforcement of rights

One of the reasons for the companies to spend money in R&D and IP registration is to attain competitive edge in the market and create a boundary for the competition. Therefore it becomes important for the companies to be vigilant about unauthorised use of IP by the third party (ies)  and they should enforce their rights in case IP infringement happens.

Conclusion

IP due diligence is indispensable for any business aiming to create, exploit, enforce their IP in most effective manner, especially when competition is ever increasing, and business sustainability depends on being “ahead of the curve”. Establishing a strong and robust IP regime that incorporates proper processes, practices, policies and agreements with an aim to optimise benefits of IP created and owned by any company, is of paramount importance.

Authors: Bhavya Sharma, Bhuvnesh Sharma

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Top 10 strategies to Stop IP Leakage in an Organization

Jun 16, 2023 | General, IPR & Business

In 2019, two senior executives of a Bangalore-based IT company were arrested for allegedly stealing data from their employer’s company and using it for their own company. They accessed the company’s client list and used it for their own benefit. Upon further investigation by the company’s operations team, it was found that it was Intellectual Property (IP) that was stolen and the money diverted. In Navigators Logistics Ltd v. Kashif Qureshi & Ors., the court held in favour of the employees saying that the former employers cannot restrain them from using their customer list.

Today, most businesses are facing the threat of IP theft or leakage by the their members such as employees and even consultants. Intellectual Property (IP) is a valuable asset for any organization not just due to its market value, but also the amount of money and effort which goes in to create it. Due to its intangible nature, IP is easy to misappropriate & leakage of IP may happen due to inappropriate disclosure by employees, lack of safety measures or weak policies and agreements.

In this article, the term “IP leakage” refers to a situation where the IP of an organization is made available or accessible to third parties in a wrongful manner, causing a monetary or reputational harm to the organization. The term IP here includes registered and non-registered IP, technical and business information which is sensitive and confidential in nature.

For the organizations, identification and sealing of IP leakage points is necessary to realise the long term value of IP. Top 10 strategies to prevent IP leakage are listed below:

  1. Figure out what is the IP in your organization

The first step to avoid IP leakage is to identify what is the IP in your organization and what its potential value for the business is. Without taking stock of existing IP and knowing the nature of IP, one will not be able to devise appropriate strategies to safeguard it. Typically in an organization, the IP is in the form of software codes, proprietary products, designs, new inventions, new products, business plans, know-how, confidential information etc. Once the IP is catagorised, one may figure out the ways to safeguard it.

  1. Stringent Agreements with confidentiality clause

While transacting with external consultants, vendors, customers, employees where there is going to be an exchange of IP, one must execute an NDA (Non-Disclosure Agreement) to ensure the IP is safeguarded. Important documents such as NDAs, Service Agreements, MOUs, etc. must be reviewed by a legal expert to ensure that the clauses of such agreements sufficiently and appropriately cover the range of IP the organization possesses along with the knowledge of  relevant governing laws, arbitration, return of confidential clause, indemnity and liability.

  1. IP Policy

IP Policy along with an active IP committee may be extremely helpful in implementing right processes in an organization to handle IP. The IP Policy shall have clauses related to confidentiality and security of the information.

  1. IP Sensitization programs

Periodic IP sensitization programs by internal or external speakers may play a vital role for the employees, firstly,  to understand their roles and responsibilities with respect the safeguarding the IP of the company and secondly, to understand the risk they can impose on the current employer if they bring and use IP of their previous employer.

  1. Physical security of the documents and files

Important documents and files should be segregated as highly confidential or moderately  confidential based on their nature. All documents of confidential nature shall be labelled as “Confidential” and soft files shall have the word “Confidential” as header or footer.

  1. Restricting access

Some areas in the organization where secret trials, experiments or research are being conducted, should be restricted and only limited number of people should be permitted to enter such areas. Having CCTV camera or restriction to use smart phones may further be helpful.

  1. Registering IP

Wherever possible, IP should be registered in the form of copyright, patent, design because registration is a very effective way of safeguarding IP. The certificate of registration obtained from the Government can serve as evidence of ownership of IP. Once IP is registered, one can disclose it to others without a fear of losing it.

  1. Exit interviews and induction for new joiners

When employees leave the organization, they take a lot of IP of the company with them in the form of experience and know-how. An exit interview to remind them of their responsibilities, liabilities and the agreements undertaken by them is a very effective step to safeguard IP of the company. Similarly, an induction program for the newcomers focussed on dangers of misappropriating previous employer’s IP plays an important role in sensitising newcomers about the guidelines and processes of handling IP.

  1. IP audit

An annual IP audit is immensely useful in identifying any gaps in the IP processes adopted by the company. Audit also helps to take stock of existing IP, check their status to docket upcoming official timelines.

  1. Using software to track transfer of data or information

Nowadays, there are many software technologies available in the market which may be used to track the transfer of data from electronic devices thereby helping in protecting the company’s IP.

Leakage of IP in an organisation may be detrimental to the business and hence special care has to be taken by the organisation to deal with such situations. Strategies that need to be adopted to safeguard IP may vary depending on the kind of business jurisdiction, but a few basic principles as stated above are simple steps that an organisation must adopt to safeguard their IP and prevent leakage to avoid any damages or losses.

Authors: Bindu Sharma (Origiin IP Solutions LLP), Bhavya Sharma (Jindal Global Law School)

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Technology Transfer Agreement and it’s important clauses

Jun 14, 2023 | General

In today’s rapidly evolving technological landscape, the transfer of intellectual property rights, know-how, and technology plays a crucial role in driving innovation and economic growth. Technology transfer agreements serve as legally binding contracts that govern the transfer of these valuable assets from one party to another. Such agreements provide a framework for the licensor (the party transferring the technology) and the licensee (the party receiving the technology) to establish their rights and obligations, ensuring a smooth and mutually beneficial transfer process.

A technology transfer agreement is a legal contract that governs the transfer of intellectual property rights, know-how, or technology from one party to another party. This agreement ensures that both parties understand their rights and obligations regarding the use, ownership, and protection of the transferred technology.

Advantages of Technology Transfer Agreements:

  1. 1. Facilitates Knowledge Exchange and Collaboration

Technology transfer agreements enable the exchange of specialized knowledge, expertise, and technical information between the licensor and the licensee. This collaboration allows the licensee to gain insights into new technologies, methodologies, or processes, which can enhance their own research and development efforts. It promotes innovation by leveraging the strengths and capabilities of both parties.

  1. Accelerates Commercialization of Technology

By entering into a technology transfer agreement, the licensor can commercialize their technology more effectively. The licensee gains the rights to use, manufacture, or sell the technology, leveraging their existing infrastructure, market access, and distribution channels. This accelerates the process of bringing innovative products or services to the market, benefiting both the licensor and the licensee.

  1. Expands Market Reach

Technology transfer agreements often involve the transfer of technology across geographical boundaries. For the licensor, this opens up new markets and opportunities that they may not have been able to access independently. The licensee, on the other hand, gains access to cutting-edge technologies or intellectual property rights that can enhance their competitiveness in existing or new markets. It facilitates market expansion and growth for both parties involved.

  1. Risk Mitigation and Shared Expertise

 Technology transfer agreements allow for the sharing of risks and responsibilities between the licensor and the licensee. The licensor can mitigate their risks by transferring technology to a party that has the necessary resources, capabilities, and market presence. At the same time, the licensee benefits from the licensor’s expertise, research, and development efforts, reducing their own risks associated with developing new technologies from scratch.

  1. Access to Intellectual Property and Exclusive Rights

 For the licensee, a technology transfer agreement provides access to valuable intellectual property rights, patents, trademarks, or copyrights associated with the technology being transferred. This grants them exclusive rights within a specified territory or market, ensuring a competitive advantage over rivals. The licensee can leverage these intellectual property rights to protect their investments and prevent unauthorized use by others.

  1. Cost Savings and Efficiency

Technology transfer agreements can lead to cost savings for both parties. The licensee avoids the expenses associated with extensive research and development, as they can leverage the existing technology or know-how. The licensor benefits from the monetization of their technology, generating revenue streams through licensing fees, royalties, or other financial arrangements outlined in the agreement. This efficient utilization of resources benefits both parties.

  1. Legal Protection and Clarity

By entering into a technology transfer agreement, both the licensor and the licensee obtain legal protection and clarity regarding their rights and obligations. The agreement clearly outlines the scope of the license, the permitted uses of the technology, and any restrictions or limitations. It also includes provisions for confidentiality, intellectual property rights, representations and warranties, and dispute resolution mechanisms. This clarity minimizes the potential for misunderstandings, disputes, or infringement issues.

While the specific clauses included in a technology transfer agreement can vary depending on the nature of the technology and the parties involved, here are some important clauses commonly found in such agreements.

  1. Introduction and Background

The agreement typically begins with an introduction section that identifies the parties involved and provides a brief background on the purpose and context of the technology transfer. It may include a description of the technology being transferred and the objectives of the agreement.

  1. Definitions

This clause is included to ensure clarity and common understanding of key terms used throughout the agreement. It provides precise definitions of important terms, such as the technology being transferred, intellectual property rights, know-how, confidential information, and any other specific technical or legal terms unique to the technology or the agreement.

  1. Grant of License

 This clause outlines the scope and terms of the license being granted by the licensor to the licensee. It specifies whether the license is exclusive or non-exclusive, meaning whether the licensor grants the licensee the sole rights to use the technology or if other licensees may also be allowed. The clause may also define the geographical territory or market in which the license applies.

  1. Payment Terms:

This clause details the financial aspects of the agreement, including any upfront fees, royalties, or milestone payments that the licensee is required to pay to the licensor. It may specify the payment schedule, currency, and any additional financial considerations. This clause also commonly addresses audit rights to ensure accurate reporting and verification of sales or usage data.

  1. Confidentiality and Non-Disclosure

 Given the sensitive nature of technology transfer, this clause establishes the obligations of both parties to maintain the confidentiality of the transferred technology and related information. It includes provisions for marking information as confidential, restrictions on disclosure to third parties, and the duration of the confidentiality obligations. This clause ensures that proprietary information remains protected.

  1. Intellectual Property Rights

 This clause addresses the ownership and protection of intellectual property rights associated with the technology being transferred. It clarifies whether the licensor retains ownership or if it is transferred to the licensee. It may also include provisions for the registration, maintenance, and enforcement of these rights, as well as any limitations or restrictions on their use.

  1. Representations and Warranties

 In this clause, the licensor makes certain statements and assurances regarding the technology being transferred. These representations and warranties may include affirmations about the licensor’s ownership of the technology, its validity, or its non-infringement of third-party rights. This clause provides a level of assurance to the licensee regarding the quality and legality of the technology.

  1. Indemnification

This clause outlines the parties’ obligations to indemnify and hold each other harmless from any claims, damages, or liabilities arising from the transfer or use of the technology. It provides protection in case of intellectual property infringement or other legal disputes. The clause may specify the indemnification process, including notice requirements and the extent of the indemnifying party’s liability.

  1. Term and Termination

This clause defines the duration of the agreement and the conditions under which either party can terminate it. It may include provisions for termination due to breach of contract, insolvency, or mutual agreement, as well as any post-termination obligations, such as returning or destroying confidential information or discontinuing the use of the technology.

  1. Governing Law and Jurisdiction

This clause determines the jurisdiction and laws that will govern the interpretation and enforcement of the agreement. It helps resolve any potential disputes by specifying the courts or arbitration procedures that will have jurisdiction over the agreement. This clause ensures that the agreement complies with the legal requirements of a specific jurisdiction or that it aligns with the parties’ preferences for resolving disputes.

In conclusion, technology transfer agreements play a vital role in facilitating the transfer of intellectual property rights and technology between parties. They promote collaboration, accelerate commercialization, expand market reach, mitigate risks, provide legal protection, and offer various other advantages to both licensors and licensees. These agreements are essential tools for fostering innovation, driving economic growth, and maximizing the value of technology.

Reference

Akhzami, & Al, S. (2018). Technology Transfer and Commercialisation. Daya Publishing House. Retrieved from https://www.perlego.com/book/3067576/technology-transfer-and-commercialisation-pdf (Original work published 2018)

Author: Anas, Christ Academy Institute of Law, Bengaluru

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Unitary Patent System in EU

Jun 7, 2023 | General, Patent

This article has been authored by Bhavya Sharma, a student BBA, LLB from Jindal Global Law School during her internship at Origiin IP Solutions LLP. In this article, she analyses and lists out advantages of Unitary Patent System in EU

After decades of legislations attempting to introduce a unitary patent system amongst the European countries, this feat was finally achieved on June 1st, 2023, when the European Commission welcomed the launch of European Unitary Patent System across 17 nations of the European Union, representing about 80% of the Union’s GDP[1].  This is a landmark achievement as this System will significantly simplify the patent processes across the EU borders. The Agreement of Unified Patent Court (UPCA) was signed on 19th February 2013 by 24 EU member states. The legislation did not come into effect until June 1st, 2023, due to many political factors influencing the landscape of the EU such as Brexit (2020) and the issues posed by the German constitutional court with respect to this agreement. Finally, 17 EU countries have ratified this agreement and a detailed legal framework has been laid down to be followed to efficiently execute this system.

The System comprises of the Unitary Patent Protection (UPP) and the Unified Patent Court (UPC) together[2]. The Unitary Patent System (UPS) will strengthen the EU’s innovation and competitiveness in the patent market by introducing a unified registration and enforcement of patents across the 17 countries that have ratified this agreement. It will provide a “one-stop-shop” for patents in Europe. This brings immense benefits to the companies and innovators. This will allow them to receive a ‘unitary’ patent for their innovations and inventions, valid across all participating member states[3]. This will reduce the costs of filing separate patents in different countries. The earlier level of costs for renewing patents every 10 years separately in member states amounted to approximately €29,000. With the introduction of UPS, the costs would come down to €5,000[4], which is a significant reduction which will incentivize companies to file their patents in the member EU nations. Another benefit of this cost reduction is that it will overcome the cost gap for filing patents between European countries and other major players such as USA or Japan.

The most obvious benefit of this agreement is the time-reduction as it has become a “one-stop-shop” for registration of patents[5]. The System also introduces uniformity amongst the Member states making the entire legal process streamlined and more effective. For this very purpose, the Agreement also established the Unified Patent Court (UPC). It is an international Court that has exclusive jurisdiction in “classic” European patents and European Patents with unitary effect[6]. Its jurisdiction in “classic” European patents is not guaranteed and can be excluded entirely and brought to national courts or any competent national authorities instead normally, as well as during the transitional period of seven years. The Court comprises of a Court of First Instance, a Court of Appeal and a Registry. Additionally, a Patent Mediation and Arbitration Centre is established to resolve matters amicably[7].  This entire legal framework will ensure smooth functioning of the System and increase the efficiency of the patent registration, filing, enforcement and renewal of patents in Europe and make the patent landscape more fertile for new innovators and businesses. It will enhance the competitiveness and quality of patents emerging from the EU, while also attracting foreign investments into the EU.

Procedure for filing a ‘unitary’ patent

As is the regular procedure, the applicant must first file a European Patent Application at the European Patent Office (EPO). The EPO then follows standard procedure which remains unchanged, it checks all the necessary details and conducts an examination, if it yields positive results then it will lead to the grant of a European Patent. Then within one month, the applicant has the option of requesting the EPO to grant unitary effect for the participating nations.

In the moment the Unitary Patent System enters into force, two transitional periods are predicted when the patent reaches its final phase of grant procedure. The first transitional measure will allow applicants to file requests for the Unitary Patent even before the start of the Unitary Patent System. Once the System starts, provided that all other prerequisites for the patent registration are met, EPO will register the patent with unitary effect. If there are any deficiencies, the EPO can ask for corrections or reject the request.

The second transitional phase will provide the possibility of the applicant requesting a delay in the issuing of a grant of a European patent until the Unitary Patent System comes into effect. This will postpone the date of issuing of grant until it can get unitary effect, thereby including previous patent requests in the purview of the Unitary Patent System as well[8].

The Unitary Patent System also overcomes the linguistic barriers faced by applicants while filing patent registrations in other countries as they have to translate the text every time. A lot of money, time and additional resources are lost in the process of translation and may lead to ambiguity after translation. With the introduction of the Unitary Patent System, the UPC will conduct all the hearings with regards to unitary patents and the proceedings will take place in English, German or French[9]. While this brings uniformity to the whole process and overcomes the translation issues, the use of a few standardized languages may lead to issues amongst locals who do not conduct business in these languages.

Under this System, since a unified patent is granted in 17 nations, if any violation is to be found, the applicant may lose the protection of the patent in all these states if it is successfully challenged. This is a risk that must be taken up by the applicants which may lead to huge losses to companies and businesses.

The Unitary Patent System is a great stride to achieving maximum efficiency and uniformity in the field of patents in Europe. Many governments in the past and legislations have attempted to bring in this change from 2000, but it is only 23 years later that it has become possible. As of now there are 17 EU nations participating in this system, however the UPCA has provisions to include up to 25 nations of the EU as well. If the UPS is implemented properly and functions smoothly, one can hope that the entire EU is united in the future making the patent landscape highly welcoming for newcomers as well as existing players in the industry.

Author:  Bhavya Sharma, BBA, LLB, Jindal Global Law School

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[1] https://ec.europa.eu/commission/presscorner/detail/en/ip_23_3004

[2] https://www.mondaq.com/india/patent/1185830/the-unitary-patent-system

[3] https://ec.europa.eu/commission/presscorner/detail/en/ip_23_3004

[4] https://ec.europa.eu/commission/presscorner/detail/en/ip_23_3004

[5] https://ec.europa.eu/commission/presscorner/detail/en/ip_23_3004

[6] https://www.unified-patent-court.org/en/court/presentation

[7] https://www.unified-patent-court.org/en/court/presentation

[8] https://inventa.com/en/news/article/728/the-unitary-patent-era-is-about-to-begin-what-to-expect

[9] https://inventa.com/en/news/article/728/the-unitary-patent-era-is-about-to-begin-what-to-expect

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