On 1 June 2023, a new Unified Patent Court (UPC) and Unitary Patent (UP) will come into effect, leaving European patent holders with a number of important decisions.
The new UP regime will have an impact on European patents, patents derived by local validation of a European patent, and recently allowed European patent applications.
- Holders of granted European patents may wish to opt those patents out of the UPC so as to avoid the risk of central revocation.
- Holders of European patent applications that are about to secure allowance may wish to defer grant of those applications so as to have the option of covering some of the European countries under the new UP regime, which may provide cost advantages. In general, the costs of proceeding as a UP is roughly comparable to selecting the four most-commonly designated European states under the current validation pathway.
Further details on UP coverage can be found here and potential cost savings can be found here.
Unified Patent Court and Unitary Patent
The UPC will have sole jurisdiction for litigation relating to UPs. After a transitional period the UPC will also have sole jurisdiction for non-unitary European patents (validations of European patents) in states that participate in the UPC, unless the patentee takes steps to "opt out" beforehand. The transitional period is 7 to 14 years.
During the transitional period, both the UPC and the national courts of the participating member states will have jurisdiction for litigation relating to non-unitary European patents unless the patentee has "opted-out" in respect of that patent. If the patentee does not "opt out" in respect of the patent, existing granted non-unitary patents could be subject to central revocation in the UPC. Such revocation would be effective in all EPC member states that participate in the UPC following a successful validity challenge.
There will be a three month "sunrise period" from 1 March 2023 to 31 May 2023. During the sunrise period patentees can "opt out" of the UPC having jurisdiction over their European patents. Taking this action will protect the patents from being subject to central revocation by the UPC.
Once the UPC comes into effect on 1 June 2023, it will still be possible to opt out in respect of non-unitary European patents and applications during the transitional period mentioned above, provided no action is pending at the UPC at the time. It is also possible to reverse opt out requests if no UPC proceedings are pending in a national court.
Pros and cons
Lower administrative cost and burden
If a newly granted European patent is to be validated as a UP, a "Request for Unitary Effect" must be filed at the European Patent Office within one month of publication of the grant. Taking this action will likely involve a lower administrative costs burden for the patentee – only a single translation of the patent will be required. In contrast, proceeding with regular national validations usually requires a national agent to be appointed and a translation of at least part of the specification. A UP will likely incur lower renewal fees than a "bundle" of four or more traditional national validations in states that participate in the UP. Renewal fees for UPs are based on the cost of renewals in the four UP-participating states in which European patents are most commonly validated.
Central enforcement and central revocation
When litigating a patent in Europe there can be benefits to having a single patent right that can be enforced in multiple jurisdictions in a single action. However, as mentioned above, UPs (and traditional European patents that have not been opted-out) will be subject to the jurisdiction of the UPC, making central revocation of these rights a possibility.
Not all EPC members covered by UP
Only 24 of the EU states have agreed to participate in the UPC and UP. Moreover, the UP will not cover all of those 24 EU states at the time of commencement. Only states that have both signed and ratified the UPC Agreement at the time of filing a request for a UP will be covered by that UP. At the present time, Croatia, Spain and Poland have not signed the UPC Agreement, and a number of signatory countries have not yet ratified the UPC Agreement.
It is expected that the geographical scope of the UP will expand over time as more countries sign up. However, a UP will only be effective in respect of the EU states that were members at the time of requesting the UP.
UP can only cover EU member states
A UP can only cover EU member states. Accordingly, although a number of non-EU states (including the UK, Norway and Switzerland) are contracting states to the European Patent Convention, the protection conferred by a UP cannot extend to these states. To obtain a UP and patent protection in these states, it will be necessary to proceed with regular national validations as well as a UP.
Applicants for European patents will need to weigh up the benefits and risks associated with validating their European patents as UPs or regular national validations. Instead of choosing a complete opt out of the UPC and UP, it is possible to pursue a mixed approach, using regular national validations and opt-outs for important patents to avoid the risk of central revocation, while pursuing UPs (with additional national validations as necessary) for less important patents. It is also important to note that the administrative cost savings and reduced renewal fees mentioned are not applicable to previously granted and validated European patents.
Action needed now to opt out
In light of these developments it is important for all European patent right holders and applicants to identify patents and applications that could come under the jurisdiction of the UPC, and then to make a decision as to whether to opt out. To protect European patents and patent applications from the risk of central revocation, "opt out" requests should be filed as early as possible in the sunrise period. Early instructions are also encouraged to ensure that the legal ownership of any patents to be opted out is correctly recorded. There is also an option to file a bulk opt out request for multiple patents if that is of interest.
It is also now possible to request postponement of the decision to grant when replying to a notification of allowance of a European patent under Rule 71(3) EPC. The EPO will then delay the decision to grant so that the mention publication of the grant is published in the European Patent Bulletin on or immediately after the date of entry into force of the regulations implementing the unitary patent. This will provide the opportunity to obtain a unitary patent should one be desired.
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.