After a long period of waiting, the Unitary Patent (UP) and Unified Patent Court (UPC) are finally here, representing a significant change to patents in Europe.
The last act needed for the new system to come into effect has now occurred, with Germany having ratified the Agreement on 17 February 2023. The UPC will start from 1 June 2023, and Unitary Patents will become available from that date. A 3-month ‘Sunrise’ period starting on 1 March 2023 is also available for owners of existing granted European patents and applications to opt-out from the jurisdiction of the UPC, should they wish to do so. We provide an overview of the UP and UPC system below.
History
The process for obtaining a European patent has been that an applicant files a single patent application at the European Patent Office (EPO) to cover the 39 European Patent Convention (EPC) Member States but following grant the European Patent splits into individual patents which must be validated and renewed in each country of interest. The idea of a true single European patent is almost as old as the EPC itself, with initiatives to create a ‘Community Patent’ dating back decades, but has now come to fruition with the creation of a Unitary Patent (UP) and a Unified Patent Court (UPC).
What is a Unitary Patent (UP)?
A UP is a single patent which covers a significant part of the European geographical region, with 17 countries having joined the initiative at the outset. The costs of obtaining and renewing a UP will be significantly lower than the costs involved in validating a European patent in those countries via the traditional route, and renewing those patents. Those cost savings may be attractive to SMEs looking to obtain broad patent coverage in Europe.
However, at the same time, UPs may be invalidated for all 17 countries (but can be simultaneously enforced) via a single court proceedings.
Who is participating?
Not all members of the European Patent Convention, or of the European Union, are participating in the Unitary Patent system. The 17 countries that are joining the initiative at the outset are:
| Austria | Finland | Lithuania | Slovenia |
| Belgium | France | Luxembourg | Sweden |
| Bulgaria | Germany | Malta | |
| Denmark | Italy | Netherlands | |
| Estonia | Latvia | Portugal |
Further EU states may join in future. EPC member states that are not currently participating in the UP/UPC are:
| Albania | Greece | Latvia | Romania |
| Switzerland | Croatia | Monaco | Serbia |
| Cyprus | Hungary | Montenegro | Slovakia |
| Czech Republic | Ireland | North Macedonia | San Marino |
| Spain | Iceland | Norway | Turkey |
| United Kingdom | Liechtenstein | Poland |
Countries which are not part of the EU (even if they are members of the EPC), such as the United Kingdom and Switzerland, will not be eligible to join the UP system.
What will the process be?
The current process to obtain nationally validated patents in Europe involves prosecution of an application before the European Patent Office, acceptance and grant, followed by validation in the countries of interest within 3 months of grant, and payment of renewal fees annually in each country where the patent has been validated.
The UP path will branch from the current process at grant. Patentees will be able to choose whether i) to opt for traditional validation as is currently the case, or ii) to elect a UP for those countries which are part of the UP system, together with validating individually in countries of interest that are not part of the UP system. Election of a UP must be made within one month from grant.
With the current validation process, different European countries have different translation requirements, with some requiring no translation be provided, and others requiring a translation into their official language of the claims or entire specification.
For the UP, it will be necessary to provide one translation of the full granted patent specification. For European patents that were prosecuted in English, a full translation of the specification in an official language of an EU member state must be provided. However, if the language of the prosecution proceedings was French or German, a translation into English must be provided.
Only patent applications filed on or after 1 March 2007, when Malta acceded to the EPC, will be eligible for the UP route.
What are the costs?
In the UP system, all fees including renewal fees will be paid to the EPO. This differs from the current system where, post grant, renewal fees are payable to each national patent office where the European patent has been validated.
Renewal fee amounts for UPs (covering 17 countries) will be based on the combined renewal fees of the top four countries where a traditional European patent is granted (Germany, France, the Netherlands, and the UK), with fees ranging from € 35 (year 2) up to € 4,855 (year 20).
What is the UPC?
Alongside the Unitary patent, the Unified Patent Court is also being set up to decide on infringement and validity of Unitary patents. The UPC decides matters of infringement and patent validity. It will provide challengers with the opportunity to invalidate a Unitary patent across all 17 countries via a single court proceedings. Patentees will also be able to enforce a Unitary patent in multiple jurisdictions simultaneously, but the system introduces a new vulnerability for patent owners.
In addition, there is no history of past decisions from the UPC, which leads to uncertainty about whether to expose patents protecting valuable technology to its jurisdiction, at least until it becomes established.
As a default, the UPC will also have jurisdiction over existing traditional European patents (for those validation countries which are members of the Unitary Patent system), leading to the possibility of central attack on those patents. However, owners of existing European patents and applications have the option to ‘opt-out’ of the jurisdiction of the UPC.
Should I elect a Unitary Patent?
For European patent applications approaching grant, careful consideration should be given as to whether to elect a UP at grant, or whether to follow the traditional validation route.
On the one hand, validation and renewal costs will be significantly lower for a UP, potentially allowing the opportunity to extend protection across more countries.
On the other hand, the UP will not cover all European countries, and the patent will be exposed to the jurisdiction of the UPC, a new court, and to the risk of central revocation. In addition, flexibility in dropping some countries to save renewal fee costs as the patent ages will be lost.
Should I opt-out existing European Patents/Applications from the UPC now?
As mentioned above, owners of existing European patents and applications have the option to opt-out of the jurisdiction of the UPC, so that the patent family can only be challenged and enforced individually in each European country where the patent is validated.
An opt-out request can only be filed if proceedings before the UPC have not already commenced. However, a 3-month sunrise period is being provided for owners to opt their existing European patents and applications out from the jurisdiction of the UPC before any revocation proceedings can be filed. That sunrise period commences on 1 March 2023.
If a case is opted out from the jurisdiction of the UPC, it is possible to opt back in at a later stage, for example if the patentee wishes to enforce the patent in multiple countries simultaneously. However, filing a second opt-out subsequently will not be possible.
The validity of an opt-out request can be challenged by a third party, and so it is important to ensure that the opt out request is valid. For example, the request needs to be made on behalf of the true proprietor(s) or applicant(s), and so if the European patent or patent application has been assigned, that needs to be reflected in the opt-out request.
Key Takeaways
- For existing European patents and patent applications, decide now whether you wish to opt them out of the jurisdiction of the Unified Patents Court.
- For pending European patent applications:
– When approaching grant, consider whether or not you wish to obtain a Unitary Patent for that case, or validate via the traditional route;
– Consider asking the EPO to delay cases approaching grant now (the EPO will defer granting of European patent applications on request to enable owners to use the Unitary system).
For more information, please get in touch with your contact at Griffith Hack.
