Unitary Patent and the Unified Patent Court
The Unitary Patent (UP) and Unified Patent Court (UPC) start to have effect from the 1st June 2023, which marks a major change in the landscape of European Patents.
In essence, it is an agreement between (at present) 17 Member States of the European Union to provide a single European Patent covering those 17 Member States and a Patents Court having exclusive jurisdiction over disputes relating to European Patents. The UK is, of course, not a member of the European Union per se and, so, these changes do not directly affect European Patents (UK); however, your Patenting strategies outside of the UK require further consideration.
To date, the present Member States of the UP and UPC are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
Unitary Patent
The UP starts as a European Patent Application – essentially the same as an historic European Patent Application, being a single Application process for prosecution of Patent rights in all signatories of the European Patent Convention (EPC) – however, at the point of grant, instead of validating the European Patent in selected territories, one may choose the Patent to have unitary effect, providing a single Unitary Patent in all the 17 Member States.
It should be noted that not all EU members are Member States of the UP / UPC, nor are all present signatories to the EPC, including the UK, members of the European Union. As such, from the 1st June 2023 onwards, granted European Patents may be chosen to be a Unitary Patent, covering those 17 Member States, and a number of national Patents, validated in (other) selected territories covering non-EU signatories to the EPC and remaining EU territories, who are not presently Member States of the UP / UPC.
Theoretically, costs will be saved by not having to individually validate the European Patent in individual territories – at least for the 17 Member States – and, when it comes to Renewals, theoretically costs will be saved by their being a single Renewal process covering all 17 Member States. One says theoretically, because the level of costs are presently unknown and, as the UP covers 17 countries, one might expect the Renewals for a handful of select territories to be less than a single Renewal for 17 Members States, some of which you may probably have never considered as worthy of your Patenting strategy.
There are many uncertainties at this time and, so, probably the best consideration is whether to change a system which is tried and tested for one that is presently untried, and unknown. Over time one would expect the UP to provide additional benefits, especially if the number of Member States expand, but only time will tell.
Unified Patent Court
The UPC is a Central Court which, once fully operational, will have exclusive jurisdiction over disputes (infringement and validity actions) relating to European Patent Applications, Unitary Patents in the 17 Member States, and existing European Patents previously validated in one or more of those 17 Member States. So, the UPC will not have jurisdiction for European Patents validated in non-EU signatories to the EPC nor in other EU territories, who are not presently Member States of the UP / UPC. One might think the jurisdiction applies to only granted Patents, and it is hard to see how this might affect European Patent Applications, but those are allegedly within its remit too.
It should be noted that there is a transitional period of initially 7 years during which it will still be possible to bring infringement and validity actions through the national Courts of the Member States, and this period may be extended.
There are again many uncertainties at this time. The UPC is presently untried and unknown. One cannot know the efficacy of a Court and its Decisions, or the quality of its Judges, until it is tested, but do you wish to be the testers? Over time one would expect the UPC to develop, and those initial concerns become less weighty – again, only time will tell.
Practical Considerations
As a business, you will need to decide whether, at the point of grant, you will wish your European Patent Application to have unitary effect in the 17 Member States and, thereby, commit that Patent to the exclusive jurisdiction of the UPC (for the 17 Member States). Standard validations may be conducted for other territories, of course.
It should be noted that, although there are presently 17 Member States, one would expect this list to expand over time and, if such expansion is administered in a way similar to European Trade Marks and Designs at the EUIPO, at the point of a new member joining, the right would be extended to Patents in the new territory automatically. One cannot tell for certain, but this is what is expected.
If, as a business, you do not wish the new Courts of the UPC to have exclusive jurisdiction over your Patent rights in those 17 Members States, one must take action and opt-out of this exclusive jurisdiction.
The system appears to have been set up to allow a party to opt-out of exclusive jurisdiction and, in the future, opt back in (should it wish to); however, one thing is certain, if you elect to have a UP, one cannot subsequently opt-out of the UPC’s jurisdiction. Accordingly, if you elect to have a UP, you are committing yourselves and cannot change your mind later.
An opt-out is effective once it is entered in the UPC Registry. How long this may take, given the large number of relevant rights and expected large number of opt-outs filed, is somewhat of an unknown.
A sunrise period has been provided which allows owners of relevant rights to opt-out from the exclusive jurisdiction of the UPC before it automatically assumes exclusive jurisdiction, and this sunrise period ends on the 31st May 2023, the day before the UP and UPC starts on the 1st June.
As of yesterday, our Chartered Institute (CIPA), raised serious concerns with the UPC that CIPA members were having trouble with the function and capacity of the case management system set-up by the UPC, owing to the very large number of opt-out requests being made – such that it thought not all could be recorded by the end of the sunrise period. The UPC has not addressed these concerns, as of yet.
Accordingly, those ,who have an existing granted European Patent in one or more Member States will need to take action if you wish to prevent the UPC automatically having exclusive jurisdiction over your Patent from the 1st June 2023.
Although a deadline has been set, it should also be noted that opt-outs may be filed at any time (i.e. after the 1st June 2023) as long as no action has been brought with respect to the Patent before the UPC. In practically all cases, the likelihood of a third-party bringing an action before the UPC before any opt-out is recorded is very low but, theoretically, could happen.
If one does opt-out, it should be noted that one can remove this opt-out in the future, as long as an action has not been brought before a national Court of one of the Member States.
The UPC is intended to increase legal uniformity and provide a decision which is binding on all Member States, through a single action in Court. In some cases this would be an advantage, for example if just infringement were to be considered. However, in matters such as validity, the UPC might allow a third party to attack the Patent centrally, causing its invalidation in all Member States. This latter point is the main cause for concern to Patent Attorneys.
Action
Please note that there are still many unknowns with respect to the UP and UPC and, as advisors, it can be very hard to steer or guide our clients when we, ourselves, are still in the dark. The most urgent actions are for those who presently have granted European Patents in at least one Member State, such that one must very soon consider whether to opt-out of exclusive jurisdiction of the UPC.
For those having European Patent Applications, the UPC apparently has no immediate effect on those Applications, and it is only at the stage of grant that one must make a decision on the UP, although one can opt-out in advance.
Please note that the following links provide additional information on the UP and UPC, and various potential questions have already been answered in the FAQ page of the UPC website:
EPO – Unitary Patent; and
The Unified Patent Court | Unified Patent Court (unified-patent-court.org).
