Dec 11 2024 44 mins 2
In 2024, the European patent system is undergoing one of its most significant transformations in decades. The introduction of the Unitary Patent and the Unified Patent Court is reshaping how intellectual property is protected and enforced across Europe. For innovators and businesses alike, this marks a pivotal moment—one that promises streamlined processes but also introduces new complexities. Today, we’re exploring what these changes mean and how they might impact the future of innovation.
Joining me for this fascinating discussion are two renowned experts in intellectual property law, Robert Alderson and Mariella Massaro, partners at Berggren, a leading European IP firm. Both Robert and Mariella bring unique perspectives and deep expertise to our conversation. Robert is a rare hybrid in the IP world, qualified to practice before the United States Patent and Trademark Office, the European Patent Office, and now the Unified Patent Court. With more than 20 years of experience spanning two continents, he offers a nuanced understanding of both U.S. and European patent practices.
Mariella’s career has been equally impressive. A Certified Licensing Professional and recognized IP strategist, she has nearly two decades of experience navigating the complexities of IP litigation and commercial transactions. Her work with clients preparing for the Unitary Patent system highlights the practical challenges—and opportunities—that lie ahead. From pharmaceuticals to fashion, her portfolio reflects the wide-reaching implications of this new patent framework.
Together, Robert and Mariella will break down what you need to know about the Unitary Patent and Unified Patent Court, offering insights on how to prepare, adapt, and thrive in this evolving landscape. Whether you’re an inventor, an entrepreneur, or simply curious about the future of innovation, you won’t want to miss this episode.
In This Episode:
[04:22] Mariella shares an example of what UPC is now. She talks about Seoul Viosys Co., Ltd. and Seoul Semiconductor Co., Ltd., v. Expert Klein GmbH, expert e-Commerce GmbH, Düsseldorf (DE) LD.
[05:06] The UPC court is very fast.
[08:56] Mariella talks about another case, 10X Genomics and Harvard v. Nanostring, that sets the criteria for claims interpretation for validity and infringement.
[10:00] Robert talks about Sanofi v. Amgen. This was the first successful revocation action at the UPC. If you're going to file a patent in the US and Europe, you have to satisfy the different requirements.
[12:38] The application of the doctrine of equivalents at the UPC.
[13:45] What happens when there is a UPC action that is conducted in parallel with the EPO opposition? Astellas versus Herios.
[15:41] Focusing on unitary patents and filing and prosecution strategy. There has been an uptick in unitary patents.
[16:29] Robert talks about the transitional period in unitary patents.
[19:41] AIM Sport versus Suponor. Some of these issues are only for the transitional period.
[22:02] If the national patent application strategy is going to be used, it's important to understand which countries you can use the PCT route and which countries you can't.
[22:34] How TTOs can use this transitional period to balance the risk. Use a unitary patent with the broadest possible claims, and then file a divisional application and classically validate that patent.
[24:22] We learn about literal double patenting. This is only available under specific circumstances.
[26:50] This strategy is being utilized in the US currently.
[27:14] What TTOs need to know when licensing their patent portfolios in Europe. Make sure all of your rights in the ownership agreement are addressed specifically.
[37:33] How representation of joint owners before the EPO and UPC work.
[38:13] The first applicant listed is considered the common representative.
[40:33] Robert and Mariella share what they think TTOs should look out for in 2025.
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