Ean is a Partner in our Electronics & Software team, based in our Manchester office. He has a particular interest in telecoms, having spent the first few years in the profession working in-house for Nokia. He regularly handles subject matter ranging from RADAR systems, signal processing and digital systems to pipe couplings, medical devices and production equipment.
Ean jointly heads our Education sector team and works for a range of clients, including Universities (in the UK and abroad), global corporations and SMEs, operating in and around the Manchester area. He particularly enjoys working with up and coming companies, including spin-outs, helping them to identify and protect their intellectual property. He has experience of hearings before the UK and European Patent Office and frequently advises clients on contentious issues where their rights may be infringed or where they are accused of infringing the rights of others.
Before entering the patent profession, Ean spent several years working as a design engineer for Marconi and Motorola. This real-life commercial experience was invaluable and gives Ean an insight into some of the challenges faced by clients.
Ean was also mentioned in Managing Intellectual Property’s IP Stars guide in 2017 and described as a “problem solver” by a client.
To avoid UPC jurisdiction for classically validated patents, the Applicant will have to opt-out each European patent during a transitional period. Once opted-out, infringement and revocation proceedings will need to be brought before national courts in each ratified state as happens now.
The transitional period will initially be a 7-year period. After the transitional period ends, it will not be possible to opt out classically validated patents or pending European patent applications and UPC jurisdiction will only be able to be avoided by filing national patents.
Classically validated patents can be opted-out during a transitional period. The transitional period will initially be a 7-year period. But that may be extended for further 7-year periods (possibly until the UPC has established case law and procedures that users are happy with). European patents granted after the transitional period or classic validations and applications not already opted-out, will not be able to be litigated in national courts. Once opted-out, the patent is opted out for the life of the patent. But the patent can be opted back in. However, a classically validated patent cannot be opted-out once an action under the patent has begun at the UPC.
Each European patent will need to be opted-out individually. An opt out covers all classic validations of that patent. The procedure is not yet known. But there will not be any official fees to opt-out. The register will be kept by UPC.
There will be a SUNRISE register for registering opt out of legacy patents before the UPC enters force. The SUNRISE register may open 3-6 months ahead of the UPC starting. The SUNRISE register will be copied over to UPC register as soon as the UPC enters force.
Caution needs to be applied before the impact of Brexit on the package is certain.
It is hoped the UK will stay party to the package after the UK exits the EU, after all, why would they sign up if the intention wasn’t to stay. However, there is a risk the UK would exit the package when they leave the EU. If this happens, the UK would no longer be covered by the new unitary rights
Again, it is expected that transitional provisions would be put in place to prevent any UK rights or relief being lost. But until the picture is certain and the continuation of unitary rights and relief guaranteed in the UK, Brexit adds a further dimension to consider when deciding a strategy to deal with the Unitary Patent and the UPC. For advice please contact us at firstname.lastname@example.org
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