You serve as an expert working with organisations that are engaged in work with the rules for the UPC. What should practitioners and rights holders be doing to prepare for its opening?
It is crucial that rights holders and practitioners educate themselves about both the UPC and the new unitary patent. Wise decisions must soon be made, including if and when they should join the new system. It is not guaranteed that the unitary patent will be a good fit for all rights holders. Different decisions must be taken depending on specific circumstances. SMEs may have issues to consider that multinational companies may not. If the patent strategy includes patent applications in fewer than four to five European countries, it must be analysed whether it is cost-effective to apply for a unitary patent. If you have a large patent portfolio, you may have other issues to consider – the risk of a central revocation that would affect many countries if you are within the system must be balanced against the possibility of obtaining a cross-border injunction in several countries. The basic issue for patent holders comes down to the quality of the court, which remains to be seen. There are many challenges for practitioners, including the new extensive rules of procedure. Practitioners who wish to appear before the UPC will need to learn these rules.
How do you expect the Swedish patent licensing landscape to evolve in the next five years?
We expect that there will be a lot of activity in patent licensing. Sweden has several interesting pharmaceutical research companies with projects that look likely to result in innovations to be licensed to the market. In the telecom field, 5G is also approaching the market. In Sweden we also have many innovations in the green tech area, which can hopefully be licensed to countries struggling with environmental challenges.
What has been your most memorable case and why?
There have been several memorable patent disputes in the pharmaceutical field. It has been a privilege to work with in-house patent experts as well as other skilled European colleagues in big pharma cases. A strong memory for me is a pan-European case where some cases had been lost in other countries and even in the preliminary injunction phase of the Swedish case. We managed to win in the end, thanks to fantastic support from the client and experts who were able to explain the technical background in a clear and concise manner for the judges. This resulted in a settlement, which prevented further extensive litigation.
How does your firm identify talent and what does it do to develop it?
The IP field is popular among students, which makes it easier for us in the battle to secure the best talent. Being a big firm, we offer several opportunities to practise in different areas, which our first and second-year associates do. Those who return to intellectual property are particularly interested and motivated in the area. We have an ambitious education programme internally but also externally. It takes time to become a specialist, so we hold extensive discussions, narrowing down which field of intellectual property the individual lawyer wants to become a leading expert in, and from that, tailor their development.
What are the biggest enforcement challenges facing your clients at present and how are you helping them meet these?
Intellectual property is a complex field. Although clients have in-house IP lawyers, it is a challenge to keep abreast of developments. Practising as an IP lawyer in Sweden, you must not only consider local law, but also remain updated on the law at the European level and, to some extent, at a global level. Having IP lawyers at Vinge with different focus areas and seniority, we believe we can serve our clients’ needs in complex matters but also provide swift, business-oriented advice depending on the decision to be made. An open discussion with the client to decide which investigations are needed with a cost estimate is vital. This is typically the case when a decision must be made as to whether to take a dispute to court or not. This makes the question of enforcement a challenge due to the fact that a thorough investigation is required.
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Håkan Borgenhäll has been a partner in Vinge’s intellectual property department since 2013. His professional practice includes disputes concerning trademarks, patents, copyright and registered designs, commercial IP agreements and marketing law. He also provides advice in relation to IP strategies as well as the establishment of IP rights. Mr Borgenhäll graduated with an LLM from Lunds University in Sweden and is top-ranked by Chambers and Partners and World Trademark Review.