Unitary Patent and Unified Patent Court (UPC)
02 March 2023
The German government has now ratified the Agreement on a Unified Patent Court (UPC), meaning that the UPC will become operational on 1 June 2023.
The UPC will fundamentally change the patent landscape in Europe by offering users of the European patent system a new option for patent protection (the Unitary Patent) and for the settlement of patent disputes across Europe (the Unified Patent Court).
At Lewis Silkin we believe that our full service, IP360 offering means that we are uniquely positioned to advise you on all matters relating to the Unitary Patent and Unified Patents Court. Our European Patent Attorneys are qualified to represent clients before the UPC, and our patent litigation lawyers are eager to advise on all aspects of patent infringement and revocation actions.
Certain critical steps may need to be taken before the UPC goes live.
What is the Unified Patent Court (UPC)?
The UPC is a new European patents court for conducting litigation involving European patents, for example patent infringement and revocation proceedings.
Currently, European patent litigation is conducted by national courts in the countries where the European patent was validated. The new UPC will have jurisdiction over new Unitary Patents, and by default will also have jurisdiction over all existing European patents effective in participating EU Member States.
If I am the owner of an existing European patent, what does this mean?
For owners of existing European patents this means that proceedings for infringement of a patent across a number of territories may be brought centrally before the UPC in a single action. However, it also means that a third party will be able to seek/counterclaim for revocation of a European patent in all states in which it was validated through a single revocation action filed with the UPC. Given that the UPC is currently untested, with no case law, many patent proprietors are approaching the UPC with caution.
Thus, patent proprietors who would rather their patents remain outside of the new UPC system can “opt out” their existing European patents from the UPC system. Opted-out patents will fall under the jurisdiction of the various national courts, as is currently the case.
A three month “sunrise” period started on 1 March 2023 during which patent owners will be able to opt out their existing European patents, and pending European patent applications, and thus avoid the jurisdiction of the UPC before it comes into effect. Opting-out will continue to be available after the UPC becomes operational, but will only be possible if no case involving the patent has been brought before the UPC. Thus, to guarantee avoidance of the UPC jurisdiction, a patent must be opted out during the sunrise period.
The opt out will last for the lifetime of the European patent, unless the patentee subsequently withdraws the opt out (which is irrevocable, i.e. a second opt out cannot be filed).
There is no official fee for opting out a patent.
What should I do now?
We recommend the following actions are considered in preparation for the start of the UPC:
- Review your European patent portfolio. Are the rights held in the correct name? Is the owner indicated on the European or national register of patents the true owner? Do the registers need updating?
- Decide upon an opt out strategy, for the sunrise and transitional periods. Which patents should be opted out, and which left in? Should all patents be opted out, left in, or considered on a case-by-case basis? Should any divisional applications be filed, to allow for patents in a given family to be both opted out and opted in? Are any of the patents co-owned with a third party, and can an opt out/leave in strategy be agreed between the parties?
At Lewis Silkin we are here to make your life easier, and our team of European Patent Attorneys and specialist Dispute Resolution lawyers can file opt-out requests with the UPC on your behalf: if you provide us with details of the patents you want opted-out then we can do the rest. However, if opting your patents out of the UPC system is of interest to you then we strongly recommend contacting us as soon as possible to discuss this with us first, to ensure that the adopted strategy meets your business needs and to identify any specific issues which may need to be addressed. If you are considering patent litigation, then our experts can advise you as to the best strategy to meet your commercial needs.
What is The Unitary Patent?
The Unitary Patent aims to allow patent proprietors to obtain uniform territorial protection across all participating EU member states, by filing a single request with the European Patent Office (EPO). The procedure is designed to be very simple and straightforward to use, and as a consequence the cost of obtaining patent protection throughout the participating states will be lowered. In particular, different “validation” requirements in different states are dispensed with, and a single annual renewal fee will be payable to the EPO.
How do I get a Unitary Patent?
Unitary Patents will be obtained via the existing European patent system, run by the EPO.
Thus, as with the current system, a single patent application is filed with the EPO (in either English, French or German) which is examined and, if found to meet the necessary criteria, granted as a European patent.
The patentee must then decide in which of the 38 contracting states they wish the patent to be effective. Under the current system, a validated European patent is treated as a separate national patent in each of the validated states, is subject to the jurisdiction of the local courts, and to the payment of annual renewal fees to each of the local authorities. Thus, a granted European patent is effectively a bundle of separate national patents.
Under the new system, the Unitary Patent will give patentees an additional option, by allowing validation of European patents to cover all the EU member states which have signed the UPC Agreement as a single patent. Thus, when the European patent is granted, to obtain a Unitary Patent the patentee files a “request for unitary effect” with the EPO. If the European patent is in English, then a translation of the patent specification into any other official EU language must be filed (if in French or German, then a translation into English must be filed).
Which EU states are covered by the Unitary Patent system?
The Unitary Patent is an EU property right, and thus only those EPO contracting states which are members of the EU will be covered.
Out of the 27 current EU countries, 24 have agreed to participate in the Unitary Patent and Unified Patent Court. Of these countries, to date 17 have ratified the necessary legislation:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
These are thus the countries which will initially be covered by the system when it becomes operational.
The remaining countries (which have agreed to participate but have not yet ratified) are:
Cyprus, Czech Republic/Czechia, Greece, Hungary, Ireland, Romania and Slovakia.
Spain and Poland have not signed up. Croatia joined the EU on 1 July 2013 (after the UPC agreement was signed) and is expected to join the system in the future.
(The United Kingdom originally signed the UPC agreement, but following Brexit is no longer covered by the Unitary Patent).
Patent protection in those countries which are outside of the Unitary Patent system (i.e. because they are not EU member states or have not signed the UPC agreement) will continue to be obtained via the current EPO national validation route (or of course via a separate, non-EP national patent).
What is the cost?
Unitary Patents are obtained via validation of European patents granted by the EPO. Thus, filing and prosecution costs will be the same as for current European patents. Validation costs for Unitary Patents should be similar to costs in those countries which require translations of the specification (e.g. Italy, Spain).
Currently, separate renewal fees are payable annually in each state in which a European patent is validated if the patent is to remain in force. For the Unitary Patent, a single annual renewal fee will be payable to the EPO. The cost of this renewal fee is aimed to be attractive and business friendly, set at a level equivalent to the combined renewal fees of the top four countries where European patents were most commonly validated at the time the fee level was adopted.
Transitional measures for existing European patent applications
Unitary Patents are only available for European patents granted on or after the start date of the Unitary Patent system. With this in mind, two transitional measures are in place for existing European patent applications which have already successfully passed through examination by the EPO but have not yet been granted:
- Early request for unitary effect – an applicant can file an early request for unitary effect, following which the EPO will register unitary effect immediately at the start of the system (provided the formal requirements are met).
- Delay in issuing grant decision – an applicant can request that the EPO delays issuing a decision to grant a European patent so that grant occurs after the start of the Unitary Patent system and the patent is thus eligible for Unitary Patent protection.
Why Lewis Silkin is uniquely positioned to help
At Lewis Silkin we have created “IP360”, developed from working with household name brands, in which we have brought together our highly regarded full-service IP expertise, including our own in-house European Patent Attorneys working alongside our specialist contentious and commercial IP lawyers, which we believe is without parallel in the market.
Our team of European Patent Attorneys has decades of experience in representing clients before the European Patent Office, drafting, filing and prosecuting patent applications, managing European patent validations and renewals with our bespoke in-house systems, and representing patentees and opponents in opposition and appeal proceedings. As scientists with various academic specialities, our team has a thorough experience of a wide range of technologies, from computer-related inventions through to biotechnology, via mechanical engineering, chemistry and life sciences. We not only apply our technical skills to obtain patents for our clients, but advise on portfolio management and wider business strategies, including invention capture and IP leverage.
Our Disputes team is a highly respected provider of Intellectual Property Dispute Resolution services, acting for some of the largest companies in the world as well as for small and medium businesses. Many of our lawyers are ranked as leaders in the field and have experience of all relevant tribunals from the Intellectual Property Office through to the European Court of Justice.
Whilst our objective is often to resolve disputes with the minimum of fuss and costs, we also have a track record of acting in and winning the most complex IP disputes and creating substantial value for our clients. Many of the disputes that we work on have multi-jurisdictional aspects to them, meaning we are perfectly positioned to advise on litigation strategies/forum shopping. We believe we are uniquely positioned to provide a seamless team of European Patent Attorneys and litigators under one roof.
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