Meet The Members Europe – The Unitary Patent and Unified Patent Court: the pitfalls and potential

After over 40 years in gestation, the long-awaited EU Unitary Patent package is coming into force soon. This entails:

• A Unitary Patent (UP) that will cover the European Union member countries that have ratified the Unitary Patent Agreement (applicants can obtain the UP by filing a request at the European Patent Office, the EPO).

• A Unified Patent Court (UPC) that will serve as a central body for litigation for both the new Unitary Patents and ‘conventional’ European patents and applications.

The Unitary Patent package is due to take effect on 1 June 2023. The system will increase the extent of patent coverage in Europe from European patent applications. Unitary patent protection can be requested only for a European patent granted on or after the date on which the Unitary Patent Regulation takes effect.

What is a Unitary Patent (UP)?

The UP is obtained through the EPO, with the prosecution process (up to grant) being the same as the current process for obtaining a European patent. If a UP is required, then a request for the unitary effect of a European patent must be filed within one month of the grant. It has to be requested by the proprietor(s) (via their EP representatives), so it is essential to ensure that ownership is up to date on the EPO patent. What is the Unified Patent Court (UPC)? The UPC is a new European Union transnational court system for determining questions concerning the validity and enforcement of patents (including SPCs), established under the European Patent Convention, and other matters related to applications.

When will the Unitary Patent package happen?

Preparations for implementing the Unitary Patent package are in their final stages and will come into force on 1 June 2023. The opt-out ‘sunrise’ period will start on 1 March 2023.

Warning!

EP patents that would have fallen under the jurisdiction of national courts and treated in the ‘classic manner’, will now automatically fall under the exclusive jurisdiction of the UPC unless they are ‘opted out’ of the UPC system. EP applications may fall under the non-exclusive jurisdiction of the UPC system unless opted out. Opt-out EP applications and patents can be opted out of the new UPC system. This should be done as soon as possible if deemed that this system isn’t suitable.

Experience and confidence

Many UPC judges will have been judges in patent cases in their national courts. Others will have recently completed role-specific training to prepare them for the UPC. We will have to wait until the court is active to see how balanced and effective it is in practice.

Effect of the UPC

Decisions of the UPC court will be effective automatically in all participating states. This is different from conventional national litigation routes where national patent rights, including nationally-validated EP patents, are litigated on a case-by-case basis in national courts.

Who will be in the UPC?

Initially, the UPC will cover at least 17 of the member states of the European Union (Contracting Member States).

The UK is not participating and so the existing procedure will apply when obtaining protection in the UK. Spain and Poland are examples of non-participating EU Member states, and Norway and Turkey are nonparticipating non-member states.

However, suitably qualified European Patent Attorneys, including UK nationals, will have rights of audience.

Opt-out sooner rather than later?

It will be possible to opt out of the UPC. However, there will also be a three month ‘sunrise’ period, starting on 1 March 2023 when existing EP patents and applications can be opted out of the system.

It will not be possible to opt out of an application or patent if any UPC proceedings have been started, so those wishing to opt out should do so beforehand.

Delays to registering opt-out.

An opt-out request takes effect when it has been entered on the Register, not when the request is filed. Experience suggests it may take weeks for a request to be registered, and there will be a glut of opt-out requests filed toward the end of the sunrise period.

Should proprietors/applicants opt out?

There are at least two considerations proprietors/applicants should bear in mind:

Do applicants/proprietors want their existing EP patents/applications to fall under the exclusive jurisdiction of the UPC?

• If they do, then no action is required.

• If they don’t, they must file a request to opt out of the UPC.

For EP applications approaching grant at the EPO, applicants should consider if they want to request a Unitary Patent, once the EPO grants the patent:

• If they don’t, validation in the countries of interest can take place as normal.

• If they do, a request for unitary effect should be filed at the EPO within one month of the grant date of the patent. A human translation of the entire specification into English (or another EU language if it is already in English) must also be filed.

Validations may also be initiated for countries that are designated in the EP patent, but which are not taking part in the UP. A translation cost will be applicable.

Applicants and proprietors may find it difficult to know if they should opt out. They can refer to scenarios already taken with patent portfolios to determine whether or not to renew a patent or application. Generally speaking, these decisions should consider the value of IP rights to the business.

This decision-making process often identifies the most important rights to opt out. There may also be patents and applications that aren’t considered worth maintaining, so proprietors may decide not to opt those patents and applications out.

That leaves some grey area in between. However, the process for determining which rights are absolutely ‘opt-out’ should also help you to identify those rights that you may decide to opt out purely as a precaution.

As you will appreciate, the decision-making process set out above gradually moves respective opt-out and opt-in thresholds closer together, making that final determination that much easier.