Header image: Epo.org
The EU patent package comprising the Unitary Patent and the Unified Patent Court (UPC) is once again on track to become a reality in the near future after a period of uncertainty due to the UK “Brexit” vote to leave the EU. We will in the following provide some insights about the Unitary Patent and the UPC.
What is the Unitary Patent?
The Unitary Patent is a European patent, granted by the European Patent Office (EPO), that will be a single patent with unitary effect for all of the European countries that participate in the Unitary Patent at the time the patent is granted. This is in contrast to the present system, in which a European patent after grant becomes a “bundle” of national patents.
Will the Unitary Patent replace the ”classical” European patent?
No, the Unitary Patent will be an additional option for European patent applicants that will exist alongside “classical” European patents. The current application and examination procedure at the European Patent Office will remain the same, and a decision about whether to choose the new Unitary Patent or a classical European patent will not have to be made until the patent is granted.
Should I choose a Unitary Patent?
Whether to choose one or the other depends on your business strategy. Patent proprietors only having business interests in a few European countries will probably not benefit from Unitary Patents. Patent proprietors having business interests in the entire EU – and who typically validate a European patent in many countries – will achieve significant savings from Unitary Patents. Another consideration is that with the Unitary Patent you have “all your eggs in one basket”, which means that the patent stands or falls as a whole for all of the Unitary Patent countries.
How will Unitary Patent costs compare to costs for a classical European patent?
Patent owners who validate their European patents in many countries will be able to benefit from greatly reduced validation costs and annual fees by choosing a Unitary Patent. For European patents in English, the Unitary Patent will only require filing of a single translation of the patent into any official language of the European Union. It should be noted, however, that for countries that are not part of the Unitary Patent system, the translation and validation requirements will remain unchanged.
In addition, there are potentially significant savings on annual fees, since only a single annual fee will be paid for a Unitary Patent. This fee has been set as the sum of the annual fees that would otherwise be paid in the four countries with the greatest number of validations (currently Germany, France, the UK and the Netherlands). On the other hand, it will not be possible to reduce this annual fee by abandoning Unitary Patent coverage for some countries.
What is the Unified Patent Court?
The Unified Patent Court will be a single specialized patent court having several divisions, including a Central Division with branches planned for Paris, London and Munich as well as local and regional divisions, for example a local division in Denmark, and an Appeals Court in Luxembourg. The UPC may potentially cover the entire EU, although at least initially it will only cover a limited number of EU countries. It will decide on validity and infringement of both Unitary Patents and classical European patents in the EU member countries covered by the Unitary Patent.
What if I want to continue to use the national courts for my European patent rather than the UPC?
As mentioned above, the UPC will also have jurisdiction over classical European patents. However, it will be possible to opt existing European patents out of the UPC by filing an opt-out request before the UPC begins operations. Opting out of the UPC will also be possible during a long transitional period of at least seven years for European patents granted after the UPC system starts. This will require that the patent is validated as a classical European patent and that an opt-out request is filed.
How will the UPC work in practice?
The UPC will operate with short deadlines, and all evidence will have to be submitted at the earliest possible opportunity (front-loaded system). This increases the importance of thorough freedom to operate analyses as part of your business. Lack of validity will be a valid defense (counterclaim for revocation) in infringement proceedings at the UPC.
When will the Unitary Patent and the UPC take effect?
The new system will take effect shortly after 13 EU countries have ratified the UPC, including the three countries that have the greatest number of European patent validations, i.e. Germany, France and the UK. 16 countries have currently ratified the UPC, including France and the UK. Thus, the system will take effect shortly after ratification by Germany. However, the German ratification process has been delayed because of a complaint against the future Unitary Patent and the Unified Patent Court. The complaint has been put on the list of cases to be heard by the German federal court in 2018. If it is decided to process the complaint with a trial, it may take several years before the new system will take effect, however, if the federal court decides not to process the complaint with a trial, the system is expected to take effect during the first half of 2019.
Plougmann Vingtoft is prepared for the UPC
Plougmann Vingtoft currently has eight European Patent Attorneys who have completed the CEIPI Course on Patent Litigation in Europe at the University of Strasbourg, and who therefore will be eligible to receive the European Patent Litigation Certificate under the UPC when it enters into force. Thus, we are prepared to represent our clients in this new system. The eight UPC experts are listed to the left.
The unitary patent and the EPO member states
Unitary patent states
Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden, United Kingdom
Countries that have ratified the UPC Agreement
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden, United Kingdom
Other EPO member states
Albania, Croatia, Former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, San Marino, Serbia, Spain, Switzerland, Turkey