UK: The Unified Patent Court And The Unitary Patent Regime

Currently patents granted by the European Patent Office ("European Patents") can only be enforced by taking action in the national courts of each country where there is infringement. The wheels are now in motion to establish a Unified Patent Court which will provide a means of enforcing patents in Europe through a single action.

Alongside the establishment of the Unified Patent Court, a "Unitary Patent" regime is to be brought into effect. Unitary Patents will be granted by the European Patent Office and automatically valid in all Member States participating in the regime, rather than needing to be validated in each Member State as European Patents need to be. This article gives a brie f explanation of the what the Unified Patent Court and the Unitary Patent regime will mean for European Patents.

How will the establishment of the Unitary Patent and the Unified Patent Court affect European Patents?

Unitary Patent

The establishment of the Unitary Patent regime will not itself affect European Patents in any way. Once the Unitary Patent regime is in place an invention owner applying for a patent through the European Patent Office will be able to opt for either a Unitary Patent (conferring protection in all Member States participating in the scheme) or a European Patent (designating certain Member States for protection).

Which one a patent owner chooses is likely to come down to which, and how many, Member States the patent owner is looking for protection in, and cost. For example, if the patent owner would normally only seek protection in a few EU territories it would seem not to make sense financially to opt for a Unitary Patent if it would be more expensive.

Unified Patent Court

As stated above, the Unified Patent Court will eventually have exclusive jurisdiction over Jurisdiction of the Unified Patent Court l Unitary Patents: The Unified Patent Court will have exclusive jurisdiction over all kinds of litigation relating to Unitary Patents.

l European Patents: Subject to the transitional provisions discussed below, the Unified Patent Court will also have exclusive jurisdiction in relation to European Patents. l National Patents: The Unified Patent Court will have no jurisdiction over patents granted by national patent offices ("National Patents"). Litigation in relation to National Patents will remain the jurisdiction of the national court of the country concerned.

all litigation in relation to European Patents. This means that the owner of a European Patent will have to bring proceedings in the Unified Patent Court in respect of patent infringement in any of the territories covered by the European Patent in question (with the exception of the territories of Member States not participating in the scheme). For some patent owners this will be seen as a clear advantage. However, a certain downside for the patent owner is that a third party will only need to bring revocation or declaration of non-infringement proceedings in the Unified Patent Court in respect of all the territories (of participating Member States) covered by the European Patent. However, it will actually be a long time until the Unified Patent Court will have any unavoidable effect on European Patents.

Firstly, although the agreement establishing the Unified Patent Court (the "UPC Agreement") was signed by the participating Member States in February of this year, it must now be ratified by the required number of Member States before it comes into force. The earliest the UPC Agreement can come into force is 1 January 2014 but some commentators are predicting that ratification will take a lot longer and that it is more likely the Unified Patent Court (and the Unitary Patent which is co-dependent on the UPC Agreement being in force) will not be in effect until 2015 or 2016.

Furthermore, the UPC Agreement contains transitional provisions in relation to European Patents. These provide that during the period of seven years from the date that the UPC Agreement comes into force, litigation in relation to European Patents may be brought in the relevant national courts. In addition, owners of European Patents granted or applied for before the end of this transitional period shall have the option of opting out of the exclusive competence of the Unified Patent Court. Although, the wording of the UPC Agreement is not as clear as it could be, the general consensus of commentators is that the intention is that the Unified Patent Court will have no jurisdiction over European Patents which have opted out, for the life of the patent.

The above, combined with the fact that it is possible to withdraw the 'opt-out', means that an owner of a European Patent can opt-out initially and avoid the risk of having 'pan-European' revocation proceedings being brought against it in the Unified Patent Court but then withdraw the 'opt-out' and use the Unified Patent Court to bring infringement proceedings, if it makes sense to do so - i.e. if there is infringement in multiple Member States.

It is also possible that the above transitional period may be extended by the up to a further seven years.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.