European Union: Q&A: Unitary Patent And Unitary Patent Court

1. What are the Unitary Patent and Unified Patent Court in Europe?

The majority of EU Member States have agreed to establish unitary patents (UPs), being single patents whose territorial scope will extend to all participating countries, and a Unified Patent Court (UPC), which will have exclusive jurisdiction over both UPs and, subject to a transitional "opt-out", existing and future (non-unitary) European patents in force in the participating countries.

The new patent is provided by an EU regulation (the UP Regulation). It will be obtained via a single designation following the grant of a patent application under the existing European Patent Convention (EPC). The new court is established by an international agreement between the participating countries, signed on 19 February 2013 (the UPC Agreement).

2. What countries will the Unitary Patent and Unified Patent Court cover?

The UP was intended to cover all the EU Member States and in time it may. However, Spain, Poland and Croatia have not to date joined up. The 24 UP participating EU Member States are therefore currently: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Portugal, Romania, Slovakia, Slovenia and Sweden. However, signature of the UPC Agreement does not guarantee participation in the UP and UPC – ratification is required.

Whilst the UK government had initially ratified the UPC Agreement, this ratification was later withdrawn. The UK will therefore not be a UP participating state.

3. How do the Unitary Patent and Unified Patent Court differ from what we have already got?

Assuming the participating Member States do all ratify, the UP Regulation will allow a patent granted by the existing European Patent Office (EPO) to cover as a single patent almost the whole of the EU. Such a patent will be enforceable and revocable throughout all of those participating Member States in a single action before a single court.

This differs from the current situation, in which the EPO grants a patent known as a European patent (EP), which takes effect as a bundle of individual national patents. Each of these national patents must usually be enforced and maintained individually and separately in each of the countries in which they are registered.

4. Why do we need the Unitary Patent and Unified Patent Court?

The aim of the European legislators is to reduce the cost of obtaining broad patent protection in Europe. At present most European patents are only validated in a small number of countries, meaning that the patentee does not have protection in other countries. Secondly, a single lawsuit will be able to determine infringement and validity throughout the participating Member States, thereby further reducing costs.

5. When can we expect the Unitary Patent and Unified Patent Court to come into force?

The new regime for the UP will not take effect until the UPC Agreement has been ratified by 13 member states, including the UK, France and Germany. As at 1 December 2021, 16 of the 24 EU countries states had ratified the Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal and Slovenia, Sweden. After overcoming an 11^th hour constitutional challenge the upper and lower chambers of the German parliament have now approved the UPC agreement. However, completion of the formal ratification process is being delayed until the systems required for the UPC to operate smoothly are in place. One Germany completes this process there will be a "sunrise period" of 3 to 4 months before the UPC starts full operation.

6. Can existing European patent applications become Unitary Patents?

UP protection may be, but does not have to be, requested for any EP granted on or after the date of application of the UP Regulation. Accordingly, even pending EP applications filed before that date may take effect as UPs if their grant is delayed until the Regulation comes into force. Furthermore, the EPO has announced that, once the "sunrise period" commences it will allow requests for unitary effect to be made in respect of European patent applications that are ready for grant.

7. Will you still have a choice of what type of patent to have in Europe?

Yes. Patentees can still apply directly for national patents at the relevant national patent offices and alternatively/additionally for European patents at the EPO. The latter can be validated as a non-unitary bundle of European national rights (as is the case now) or as a UP plus national validations in non-UP states. These rights can co-exist, subject to double-patenting rules that may apply in particular countries.

Whereas it will be possible to enforce UPs and non-unitary EPs (insofar as they cover UPC countries) in the new UPC, national patents will always only be enforceable in the national courts.

8. What will the Unitary Patent cost?

Filing fees –  The EPO prosecution procedure will not change. The filing fees will therefore be the same as before the EPO now.

Prosecution costs (attorney fees) –  The EPO prosecution procedure will not change. Prosecution costs will be the same as before the EPO now.

Translation costs –  For at least six and potentially up to 12 years, all UPs will have their whole description (not just the claims) filed or translated into English. Most EPs are already filed in English. Those applications filed in English will be translated into one other EU language, but this does not need to be German or French: an applicant from Sweden might choose Swedish, for instance. In addition, the claims of all accepted applications must be translated into English, French and German before grant, as presently.

Validation fees –  The UP dispenses with the traditional "validation" fees, ie the cost of preparing partial or complete translations of the granted patent for each country, save for those EPC countries which are not signatories to the UPC Agreement.

Renewal fees –  The Select Committee of the Administrative Council of the EPO has voted to adopt a fee proposal named "true TOP4", which tracks the sum of the post-grant renewal fees that would be payable in the four most commonly validated countries over the entire patent term. It follows that the cost of a UP to a patentee will be cheaper overall than maintaining a large bundle of national rights, but would be more expensive to a patentee who validates only in a handful of countries and maintains only some of those to the full term. At present over 50 per cent of all European patents are validated in three or fewer countries. For these patents the "true TOP4" proposal means an increase in maintenance costs but considerably greater coverage.

For SMEs –There will be a compensation scheme to help SMEs with the translation costs that will be incurred, if an EP application has been filed in a language that is not one of the official EPO languages, in order to have the application translated into English, French or German. This scheme will not just benefit SMEs but also universities, natural persons (that is, real people rather than corporate entities) and non-profit organisations. In each case, the party seeking compensation must be resident or have its principal place of business in a Member State.

9. How will obtaining a Unitary Patent work?

A patent application will need to be filed with the EPO as now and prosecuted in the same way. On grant, the applicant will be able to validate the EP as a UP in the participating Member States as a single "UP" designation, and also separately validate as before in all other EPC states (including the so-called "extension states").

Opposition and appeal procedures at the EPO for UPs will be the same as they are currently for any existing EP application.

Direct national patent applications are wholly unaffected.

10. What is the structure of the UPC?

The UPC will comprise a Court of First Instance and a Court of Appeal. At first instance, there will be Central, Local and Regional divisions located geographically in participating EU Member States, Regional divisions being for states that wish to share resources or judicial experience. All divisions (Central, Local and Regional) will have multi-national panels of judges.

The administrative "seat" of the Central Division will be located in France (Paris) but its work will be split with Germany (Munich) and potentially one other country, depending on the technical classification of the patent being litigated. The German section will hear mechanical and weapons cases and the French section will hear telecommunications, electrical and other cases. Before the UK withdrew its ratification of the UPC agreement, another seat of the central division was to be located in London. This section was to hear a broad range of cases, including pharmaceutical, biotech, chemical, agricultural and medical devices. At present it it not clear if the case load that would have come to London will be split between Paris and Munich or if a further seat of the central division will be created in an alternative city. Milan and The Hague have been discussed as possible candidates. The UPC will refer questions of EU law to the Court of Justice of the EU, just as national courts in member states of the EU do now.

11. How do I choose the UPC division that fits my needs?

A patentee claimant will have to bring their infringement action before a Local or Regional Division of a country where either (1) infringement has occurred or is threatened, or (2) the defendant (or one of the defendants) is resident or has a place of business. Furthermore, non-EU based defendants (ie defendants that are neither resident nor have a place of business within the participating EU Member States) can also be sued for infringement in the Central Division. If the country under (1) or (2) above does not participate in a Local or Regional Division (for example, Luxembourg or Malta), the case can again be brought in the Central Division. These rules have the potential to give a patentee claimant a wide choice of divisions in which to bring proceedings, particularly in the case of pan-European infringements.

12. What happens in the UPC in the event of a counterclaim for revocation?

The Local or Regional Division hearing the infringement action will have the discretion to (1) proceed with the infringement and revocation proceedings together, (2) proceed with the infringement proceedings but send the revocation counterclaim to the Central Division (this is the practice of "bifurcation") or (3) pause or "stay" the infringement proceedings (pending the resolution of the revocation proceedings) and send the revocation counterclaim to the Central Division. In addition, if the parties agree, the infringement action and revocation counterclaim can both be sent to the Central Division.

The ability to "bifurcate" is potentially heavily pro-patentee, if it leads to infringement actions of (possibly weak) patents being tried before validity is determined. It may also prejudice the stated aim of using a single court to determine infringement and validity to reduce costs. The Court may exercise its discretion over bifurcation, so it is unlikely to be in the parties' control. However, the following provisions in the procedural rules are important and may "soften" the impact of this, in the interests of fairness between the parties to litigation:

• The UPC will have only a discretion to bifurcate, not an obligation to do so (unlike the present system in Germany, where validity and infringe­ment proceedings must be brought in separate courts).
• Cases will typically proceed for many months (until the close of detailed written "pleadings") before any bifurcation will be considered;
• The infringement court must also stay  its own (infringement) proceedings if there is a "high likelihood" of revocation, either at the point it de­cides that validity should be determined by the Central Division, or when issuing its judgment on the infringement claim.

Anecdotally, it appears likely that most, if not all, Local and Regional Divisions will be happy to hear revocation counterclaims and are unlikely to bifurcate proceedings.

13. What if I want to bring an action for revocation first in the UPC?

If action for revocation is brought before a corresponding action for infringement, the revocation action must be brought in the Central Division. A corresponding action for infringement may then be brought either (1) in the Central Division, or (2) in a Local or Regional division as indicated above.

14. Where do I go if I want to obtain an declaration of non-infringement?

An action for a declaration of non-infringement must be brought in the Central Division, but if a corresponding infringement action is commenced (ie in a Local or Regional Division) within three months, the Central Division must stay the declaration for non-infringement action.

15. How are the proceedings in the UPC structured?

Proceedings will follow three stages, a written procedure, interim procedure and oral procedure. During the written procedure the parties will exchange pleadings outlining and arguing their respective cases, typically two pleadings on each side. In the interim procedure a judge – the "judge-rapporteur" – will make all necessary preparations for the final oral hearing and may call the parties to an interim conference to facilitate those preparations. The judge rapporteur will also explore the potential for settlement. The oral procedure will be under the control of a presiding judge and will consist of the hearing of the parties' submissions and, if ordered during the interim procedure, the hearing of witnesses and experts.

The intention is that the oral hearing should normally be completed within one day and that the first instance proceedings should be concluded in approximately a year, though in practice it may take longer.

Appeals

Importantly, all appeals will be to a central Court of Appeal, located in Luxembourg. Procedural decisions can be "reviewed". This will ensure harmonisation of substantive law and procedure across the Local, Regional and Central divisions and is therefore of critical importance to the new system.

Enforceability

The decisions of all divisions of the Court of First Instance as well as decisions of the Court of Appeal should be enforceable in any participating Member State without the need for a declaration of enforceability from a national court.

16. Who can represent clients before the UPC?

The rules allow parties to be represented by lawyers authorised to practise before a court in any of the participating Member States and by European patent attorneys who have obtained additional litigation qualifications. These representatives may also be assisted by (other) patent attorneys who may be allowed to speak at hearings before the Court.

17. What is the relationship between the UPC and the Court of Justice of the European Union (CJEU)?

This is a controversial subject, and was the subject of much debate during the negotiation of the UPCA. In the end a compromise position was reached. The UPC must "fully respect and apply" EU law "in cooperation with the CJEU as is the case for any national court in an EU Member State. The UPC should rely on and respect the primacy of the case-law of the CJEU by requesting preliminary rulings on matters of EU law. However, the basic law on validity and infringement is not derived from EU legislation but other sources, in particular the UPC Agreement itself and the European Patent Convention. The UPC will also have regard to other international agreements and national laws where applicable.

The effect of this on questions of validity (eg novelty and inventive step) is that the Court should follow the EPC and interpret that in a manner uniform across all participating Member States. The effect on infringement is more complex, though the end result is again that the UPC should apply a uniform interpretation. The legal basis is that acts of infringement are to be judged, in a manner uniform across all participating Member States, according to the national law of the EU country where the applicant for the patent was resident or had its principal place of business, or otherwise had any place of business, at the date of application. For disputes involving entirely non-EU based applicants with no other jurisdictional basis, as a fall-back position, the Court will apply German law. However, all participating states will have incorporated the UPC Agreement into its national law, so the applicable law should be the same regardless of which country's law officially applies, not least as the nature of infringing acts is defined in the UPC Agreement itself.

In practice it is expected that the UPC will build up its own jurisprudence on validity and infringement, which will be uniformly applied across the Local, Regional and Central divisions and in the Court of Appeal.

References to the CJEU will be made where issues of EU law are involved, such as the UP Regulation, the "Brussels" Regulation relating to service, and other EU regulations and law on matters such as supplementary protection certificates, biotechnology inventions and competition law.

18. What will enforcement actions in the UPC cost?

The costs of an enforcement action (infringement and validity) of a UP across the participating EU Member States will be significantly less than the aggregate costs of individual enforcement in each of even a small number of those Member States. Further, costs will be recoverable from the losing party according to the value attributed to the case. It is proposed that there will be a fixed fee for all actions brought at the UPC, and an additional value-based fee for some actions. In particular, infringement actions:

• will be subject to a fixed fee of €11,000,
• with an additional value-based fee ranging from
  • €2,500 (for actions worth more than €500,000) to
  • €325,000 (for actions worth more than €50,000,000)

The value of an action will be assessed by the Court based on the objective interest of the party filing the action and guidelines laid down in the decision of the Administrative Committee (which are yet to be published).

By contrast, revocation actions  will be subject only to a fixed fee of €20,000 and, if brought as a counterclaim to an action for infringement, the fee will be the same as that for the infringement action, subject to a €20,000 cap.

Small and micro-enterprises will be entitled to a 40 per cent reduction of the above fees.

It will be possible to receive a refund of a portion of the fees if the action is withdrawn or settled, of 60 per cent if this occurs before the conclusion of the written procedure, 40 per cent if before the conclusion of the interim procedure and 20 per cent if before the end of the oral procedure. The paying party can also get a reduction of 25 per cent of the fees if the action is heard by a single judge.

The UPC also has the discretion to refund the fixed and value based fees, in whole or in part, if a party (other than a natural person) establishes with evidence that payment of the normal fees would threaten its economic existence. It remains to be seen how generous the court will be in applying these provisions.

Recovery of costs –  The amount of recoverable costs is also based on the value of the action brought. Recoverable costs range from:

• up to €38,000 (for actions worth up to €250,000) to
• up to €2,000,000 (for actions worth more than €50,000,000).

It will be possible to increase the caps on recoverable costs in limited circumstances, such as the particular complexity of the case and the need to use multiple languages, by up to 50% for cases with a value of up to €1 million, 25 per cent for cases between

€1 million and €50 million, and up to €5 million in respect of cases with a value of over €50 million.

A party (including natural persons, small and micro-enterprises, non-profit organizations and universities) can also apply to the court to request that the ceilings on recoverable costs be lowered if having to pay the full amount, were the party to be unsuccessful in the litigation, would threaten that party's economic existence. Any such request will need to be made as soon as possible in the proceedings.

19. Which languages will be used in Unitary Patent litigation?

In the Local and Regional Divisions (see Figure 4), the language of the proceedings will be the language (or one of the languages) of that Local or Regional Division. The parties can agree, with consent of the court, to change the language. Alternatively, the president of the Court may determine that it is appropriate to use the language in which the patent was granted (which in most cases is English). Many Local and Regional Divisions propose to allow English to be used as the language of the proceedings, even if English is not an official language of the country in which the division is based, in recognition of the fact that English is the language that litigants, particularly international litigants, will frequently prefer to use.

In the Central Division, the language of the proceedings will be the language in which the patent was granted. In most cases this will therefore mean English, regardless of whether the case is being heard in the UK, France or Germany.

20. How does the system ensure that local defendants can understand the patent in issue?

The patentee can be required by the alleged infringer to provide a translation into the language of the country where (1) alleged infringement occurred or (2) the infringer's domicile is located. The patentee can also be required by the Court to provide a translation into the language of proceedings of the Court.

On appeal, the language of proceedings will typically be the same as at first instance.

Given the possibility of different divisions hearing infringement and revocation proceedings, this could mean that they are heard in different languages.

As a practical matter, the requirement that the UPC sit with multinational panels of judges suggests that English may well become the dominant working language of the proceedings.

21. Are there any transitional provisions?

The UPC will have jurisdiction not only over UPs but also over existing and future 'traditional' non-unitary European patents (that is, EPs designating one or more individual UPC States but not validated as a UP). It is to be noted that this includes validations in UPC States of all granted European patents, including those granted before the UPC came into force. 

However, there will be a "sunrise period" of three to four months prior to the UPC coming into force, during which patentees will be permitted to opt existing European patents out of the jurisdiction of the UPC, by notifying the Registry of the Court of their opt out decision,. Therefore, to avoid immediate central revocation actions being issued against all national validations (in UPC-participating countries) of a granted European patent, patent proprietors should review their existing patent portfolios without delay and identify the patnets they wish to opt out.

During a transitional period of seven years after the entry into force of the UPC Agreement, proceedings for infringement or for revocation of a non-unitary EP that has not been opted out may be initiated before the national courts or the UPC. Any proceedings pending before a national court at the end of the transitional period will continue to be heard in that national court.

In addition, it will also possible during the transitional period, unless proceedings have already been initiated before the UPC, for proprietors of or applicants for non-unitary EPs to exercise their "opt out" from the new UPC regime. The latest an opt-out can be registered is one month before expiry of the transitional period.

Patentees or applicants can withdraw their opt-out (ie "opt in") at any time (unless national litigation has commenced during the opt out). Proceedings concerning opted out EPs will only be possible in the national courts. There will be no fee for registering or withdrawing opt-outs.

After five years of this transitional period, a review will take place of the continuing popularity (or otherwise) of such litigation before national courts. Depending on the outcome, the transitional period may be extended by up to seven years (making 14 years in total).

22. What are the possible benefits of the Unitary Patent and the Unified Patent Court?

For applicants –  Reduced validation fees and translation fees. A potential reduction in renewal fees.

For claimant patentees –  Reduced cost of enforcement across many European countries.

For claimant patentees –  Ability to commence infringement proceedings in a single division that is convenient and suitable for the case to obtain a single pan-European injunction (preliminary or final) across several countries. There are numerous practical, legal, language and tactical considerations which will drive this decision, including the likely treatment of related claims for revocation. The commercial consequences of a pan-European injunction will make UPs very powerful intellectual property rights to have.

For defendant parties –  Possible reduction of cost of defending the same (allegedly infringing) product in a number of EU Member States simultaneously.

For claimants/defendants –  Ability to seek revocation of a patent in a number of EU Member States simultaneously.

For SMEs –  Possible reduced fees, certainly compared to multi-jurisdictional litigation in several EU countries at once, making patent enforcement a feasible option for SMEs who previously could not afford it. Access to injunctions in countries with court systems seen to date as not being sufficiently predictable and/or fiscally out of reach for SMEs.

23. What are the possible disadvantages of the Unitary Patent and the Unified Patent Court?

For claimant patentees –  Risk of losing patent rights across most of the EU as a result of a single action.

For defendant parties –  Risk of an injunction excluding the defendant from the whole of the EU. Also, risk of court proceedings in an unfamiliar jurisdiction within the EU, but with EU wide ramifications

In summary, the benefits of UP/UPC come with a certain degree of loss of control over the forum for the proceedings and higher risks if an adverse decision is issued.

24. What are the issues for patentees?

Deciding whether to file national, traditional EP or Unitary Patent applications.

It is for the applicant to elect whether or not to have UP protection. Therefore, it will still be possible to continue to file traditional EPs, but designate only certain individual States (eg if the applicant was only interested in one or two countries anyway). For these patents, it would then be possible to opt out of the UPC environment, either immediately or during the transitional period, and assess how that Court was progressing before opting (back) in, provided no national court action takes place in the meantime.

Similarly, it remains possible to apply for national patents in countries of interest, which will only ever be subject to the jurisdiction of national courts, as is presently the case.

Having a mixed portfolio of UPs, non-unitary European patents and national patents would be a conservative, but possibly a prudent strategy, balancing the risks and rewards of the new system. Patentees should consider now what would be an optimal strategy for its business and start to consider how it will decide on what invention will be protected by what patent right.

Deciding whether to use the opt-out for existing "traditional" EP applications.

Cautious patentees and litigants will wish to consider opting out for their existing (and valuable) EP portfolios, at least until the benefits and disadvantages of the new system become apparent. However, initial feedback is that the quality of the UPC judges will be high. There is every chance that, in time, the UPC will be regarded as the leading forum in Europe for the resolution of patent disputes, in which case patentees will be less likely to opt out and more likely to opt back in if they have previously opted out.

25. What are the issues for potential "defendants" or potential alleged infringers?

Revocation through the Unitary Patent Court or opposition at the European Patent Office?

It will be possible to bring UP revocation actions in the UPC without initiating any opposition procedure before the EPO. In view of this, should a company invalidate at the UPC, oppose at the EPO, or both?

A number of factors need to be considered:

Opposition will affect all EP designations, whereas invalidity in the UPC will affect only the UP designation or EP validations in countries that are UP member states. Invalidity proceedings in the UPC may slow down infringement proceedings in the UPC, whereas opposition in the EPO may not. Oppositions must be commenced within the nine-month opposition period following grant of the relevant patent, whereas revocation proceedings can be brought at any time. Opposition proceedings may take longer than revocation proceedings to complete, but they will be considerably cheaper. Whilst it may be tempting not to file an opposition in the nine-month-post-grant-date opposition period and to instead rely on the UPC for invalidation proceedings, it is still recommended that oppositions against European patents that are of concern be filed to make use of the well-known, cheaper and procedurally more predictable opposition procedure.

Importantly, there is no prohibition on opposition proceedings in the EPO running in parallel with revocation proceedings in the UPC and a decision of the UPC will not be binding on the opposition proceedings. Consequently, a party starting UPC revocation proceedings will often find it cost-effective and prudent to file an opposition with the EPO as well, provided of course they are still within the nine-month opposition period.

Declaration of non-infringement in the UPC?

Any company may bring proceedings in the UPC for a declaration of non-infringement. This must be done in the Central Division except where infringement proceedings under the same patent have already commenced between the same parties in a Local or Regional Division, in which case that Local or Regional Division has jurisdiction.

If infringement proceedings are started in a Local or Regional Division within three months of commencement of proceedings for a declaration of non-infringement (with the same patent and parties), the declaration of non-infringement action must be stayed. Therefore, an action for a declaration of non-infringement should be commenced at least three months before any vulnerable product is launched.

Timing of revocation actions in the UPC

Potential infringers wishing to "clear the way" for the launch of their products will need to consider commencing revocation proceedings earlier than was the case previously. The Rules of Procedure provide that if, whilst a revocation action is pending before the Central Division, an infringement action is commenced in a Local or Regional Division, that Local or Regional Division will have the discretion to proceed with both the infringement and revocation action, to keep the revocation action in the Central Division and either to suspend or proceed with the infringement action, or (with the agreement of the parties) to refer the case to the Central Division.

A party wishing to ensure that its revocation action remains in the Central Division will therefore need to commence revocation proceedings in time for those proceedings to come to trial before any infringement action can be commenced in order to avoid the risk that the revocation claim may end up being heard in the Local or Regional Division chosen by the patentee for the infringement claim rather than in the Central Division.

26. What are the consequences for the UP/UPC of the UK leaving the EU?

One consequence of the decision of the UK to leave the European Union is that the UK has also withdrawn from the unitary patent and UPC project. The UK had ratified the UPC Agreement but this ratification was withdrawn. The remaining countries are continuing their plans to implement the UP and UPC. As mentioned above, a key decision that still has to made is the new location of the branch of the Central Division that was previously going to be located in London.

Whilst none of this changes the way European patent applications are filed and prosecuted, the departure of the UK means that the unitary patent can no longer cover the UK. Patent applicants, who very often only validate European patents in two or three countries, will need to decide whether the cost of a unitary patent is still justified, or whether to validate their European patents only on a national basis.

Another consequence of leaving the EU is that, the UK is no longer within the European Economic Area. The UK remains an important market, particularly in areas such as pharmaceuticals and telecommunications. Furthermore, the expertise of the UK's patents judges is widely recognized. It therefore appears likely that we will continue to see many multi-jurisdictional patent disputes in the future, with parallel proceedings in the UK and in the UPC and/or the national courts of other European countries. Potential litigants will need to carefully plan their litigation strategies to take into account all the available options, including provisional measures such as preliminary injunctions.

The UK has applied to join the Lugarno Convention, which would clarify the respective jurisdictions of the courts of the UK and of EU members states (including the UPC). However, the EU is at present not willing to allow the UK to join, meaning that for the time being the UK courts will decide jurisdiction issues by applying its own procedural rules and the doctrine of forum conveniens.

The relations between the UK and EU will continue to evolve. Throughout this process, Marks & Clerk will continue to serve all the IP needs of its clients from its European offices.

27. What do I need to do in preparation for the Unitary Patent and the Unified Patent Court?

Consider:

Urgently and in any case in very good time before the UPC takes effect: reviewing portfolios so as to consider opting out of the system in respect of existing or future EP cases initially, to stay out of the system during a period of assessment, opting in later if it looks favourable.

Filing a mix of at least EPs, utility models in Germany and other European countries, national patents in the United Kingdom, France, Germany and the Netherlands (and any other significant countries) and UPs when available so as to provide varied methods of enforcement against infringers.

Bringing forward freedom to operate searches in any product development plan, in order to identify UPs/EPs of concern well before product launch, so appropriate action (for example, revocation, declarations of non-infringement, and licence negotiations) can be taken.

Reviewing jurisdiction clauses and enforcement clauses in existing licence agreements and other agreements relating to the development and exploitation of IP in Europe, to ensure that they take account of the UPC structure.

Gaining an understanding of your competitors' opting in/out strategy may provide you with an insight into their priorities and in turn inform your own strategies for dealing with your competitors. The portal to the database of opted out European patents will allow checking the opt in/out status of individual patents. Whilst it is not yet clear if it will also be possible to analyse entire portfolios of competitors in an easy manner, consideration to setting up patent watches should be given.

28. Can a Unitary Patent (UP) be assigned only for individual member states?

The Unitary Patent (UP) can only be assigned for the entire designated territory.

29. Must a licence of the Unitary Patent cover all covered member states?

Licences of a Unitary Patent can be granted allocating different territories to different licensees.

30. Are there any general points I need to consider for licensing of European patents/patent applications or Unitary Patents?

In the first instance the applicant of a European Patent is the party entitled to prosecute an application and determine thereafter whether to obtain a "traditional" European patent that is to be validated in individual member states of the European Patent Convention or the new Unitary Patent. Despite this, patent licences often confer the right to prosecute patent applications on the licensee. Existing licensors and licensees may wish to check if relevant agreements are in accordance with their wishes. New licences should be drafted in a manner that clarifies which party/parties has/have the right to prosecute a patent application and determine the form in which it is validated post grant.

Licences may also impliedly extend the right to opt out to licensors. Where this is the case, therefore, one party could take decisions which are detrimental to the other's interests or contrary to its intentions. Parties to an existing licence may wish to review the provisions of the licence in this regard. New licences should be drafted so that they make clear who has the right to opt out.

If a party commences infringement proceedings in a national court, all future proceedings concerning that patent will have to take place in that same jurisdiction. Similarly, if that party commences those proceedings in the UPC, all future proceedings will be restricted to the UPC. Licensing further complicates this because:

• In the first instance the patent owner is the party entitled to commence patent proceedings.
• However, exclusive licensees also have this right by statute.
• In any event, this right may also be conferred contractually on exclusive (and perhaps even non-exclusive) licensees in the licence.

One party could therefore lock the other into a litigation strategy without consulting it and against its wishes.

These complications impact on what provisions should go in new patent licences and on what changes should perhaps be made to existing ones.

31. What should I consider when agreeing a licence covering a European patent or a Unitary Patent?

Parties agreeing licences covering either a traditional European patent (that has been validated in various member states of the European Patent Convention) or a Unitary Patent should consider how to avoid the danger of one party locking the other into a path it doesn't wish to go down. This will mean agreeing solutions (inter alia) to the following issues:

• Is the licensee to be responsible for patent prosecution?
• Is the licensee to be given the right to decide on whether to validate the European patent in the currently usual way (i.e. by validating in a number of member states individually) or as a Unitary Patent?
• Is the licensee to be given the right to opt out?
• Should opting in or opting out be the default position?
• Opted out patents can be opted back into the UPC. Which mechanism is to be used for withdrawing the opt-out? Who is responsible for implementing it? 
• If the licensee is given the right to decide on the way in which the patent is validated or given the right to opt out, should the licensee be obliged to at least consult the licensor?
• Should the decision on the way in which the patent is validated or on opting out be a decision made jointly by the licensor and licensee? If so, which fall-back positions are appropriate should the parties not agree?
• If a party to a licence has the right to exercise the opt-out to avoid the risk of the patent in question being revoked at the UPC, should it be able to do so without the other party's consent, given that that other party may not want to take proceedings in the national courts?
• Who will pay for ancillary expenses associated with opting out?
• Who will pay for defending against invalidity attacks in national courts following opt out, given that the cost associated with multiple invalidity defences is likely to exceed the cost of single proceedings at the Unified Patent Court?
• If one party has the right to make any of these decisions should the other have the right to veto it under defined circumstances?

An exclusive licensee may want the right to make any of the above decision autonomously. In this case the licence should be drafted so as to ensure that the licensor is obliged to supply all necessary assistance and cooperation.

It will be appreciated that the situation is further complicated if there is more than one licensee. One licensee may wish to commence infringement proceedings in the national court (because for example the legal regime there is favourable or because the licensee will be in its home territory) but the others may prefer the UPC route. 

32. I am party to a licence covering a European patent or a Unitary Patent. What do I have to consider?

Existing agreements may well (and ought to) specify which party has the right to direct patent prosecution and commence infringement proceedings. The relevant provisions could be construed as impliedly covering the allocation of roles under the UPC regime. However, they are unlikely to accommodate the following questions:

• Is the licensee to be given the right to decide on whether to validate the European patent in the currently usual way (i.e. by validating in a number of member states individually) or as a Unitary Patent?
• Is the licensee to be given the right to opt out?
• Should opting in or opting out be the default position?
• Opted out patents can be opted back into the UPC. Which mechanism is to be used for withdrawing the opt-out? Who is responsible for implementing it? 
• If the licensee is given the right to decide on the way in which the patent is validated or given the right to opt out, should the licensee be obliged to at least consult the licensor?
• Should the decision on the way in which the patent is validated or on opting out be a decision made jointly by the licensor and licensee? What fall-back position or resolution mechanism is appropriate should the parties not agree?
• If a party to a licence has the right to exercise the opt-out to avoid the risk of the patent in question being revoked at the UPC, should it be able to do so without the other party's consent, given that that other party may not want to take proceedings in the national courts?
• Who will pay for ancillary expenses associated with opting out?
• Who will pay for defending against invalidity attacks in national courts following opt-out, given that the cost associated with multiple invalidity defences is likely to exceed the cost of single proceedings at the Unified Patent Court?
• If one party has the right to make any of these decisions should the other have the right to veto it under defined circumstances?

Of particular danger is the fact the, once proceedings have commenced (be that in national courts of the Unified Patent Court) the parties to the proceedings cannot change between the jurisdiction of the national courts or the Unified Patent Court. As such the party to the licence that decides on whether or not to opt out a European patent validated in a number of member states of the European Patent Convention can lock the other party or parties to the licence into an undesired litigation strategy or at least a strategy that has not previously been agreed. Existing licences should therefore be reviewed to see if any changes are required to accommodate the UP as soon as possible.

33. I am a joint owner of IP resulting from a collaboration agreements. Are there any considerations I need to keep in mind?

The UP regime has implications for collaboration agreements and joint ownership of IP. Collaboration agreements often give rise to jointly developed IP which will by operation of the law in many jurisdictions jointly owned. The collaboration agreement in question may not always contain contractual provisions overriding this.

Where a European Patent that has been validated in a number of the member states of the European Patent Convention is jointly owned all the owners will need to jointly lodge an application for it to be opted out of the jurisdiction of the Unified Patent Court (more on opting out here ). A licensee wanting to ensure this happens will need to secure the cooperation of all the joint owners. Cooperation agreements, in so far that they even exist, are unlikely to cover this aspect.

In general, co-owners will need to jointly agree on how to implement and pay for their prosecution, validation and litigation strategy in light of the advent of the Unitary Patent and the Unified Patent Court in the same way that they already have to agree on prosecution, exploitation and enforcement activities unrelated to the UP.

34. Does it matter which one of the co-owners of a patent application/patent is named first on the application?

The nationality of the applicant determines which national law applies to the application and granted assets as property. If a UP has joint owners of different nationality, the law of the state of the applicant named first on the application will be the one to apply. This will therefore require careful thought before the application is lodged since different legal systems confer different rights and obligations on co-owners, particularly with regard to the extent to which one owner can exploit, assign, license or defend its rights independently of the other(s).

If a collaboration agreement contemplating jointly-owned project results is entered into, it should address how this decision is made in advance of any inventions being generated. Furthermore, any uncertainty can be reduced by detailing specific contractual rights and obligations regarding exploitation and enforcement in the agreement.

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.