Introduction to the Unitary Patent & Unified Patent Court
What is the new system?
The new system comes in two parts: the unitary patent (UP) and the Unified Patent Court (UPC). The UP will be a single patent right, effective in up to 25 member states of the EU (possibly more over time). The EU already has EU trade marks (EUTM), formally known as Community Trade Marks (CTM), and Community designs (CD) – the UP adds a similar patent right to that list. Unlike EUTMs and CDs however, UPs will not be enforceable in national courts. The UP will be enforceable in a new international court, the UPC. The UPC will also have jurisdiction over traditional (conventional) European patents, subject to an important opt-out.
When is the new system likely to come into effect?
The system comes into force three months after the 13th ratification of the Agreement establishing the UPC (so long as that includes ratification by the three EU member states in which the highest number of European patents had effect in 2012, namely France, Germany, and The Netherlands now that the UK is no longer able to take part). So far, 15 countries have ratified including France and The Netherlands. Ratification by Germany is necessary before the system can start.
In addition, two member states need to agree to be bound by the Protocol on the Provisional Application. This provides a period of time within which the UPC Agreement provisionally applies, and allows for final preparations to be made so that the UPC can become fully operational. These preparations include employment of judges and finalising the UPC Rules of Procedure. There is no prescribed time-frame for the provisional application period, but it is currently expected to be approximately 12 months. Within this period, ideally a few months before its end date, Germany should deposit its ratification of the UPC Agreement so that the UPC can come into effect three months later.
A current estimate for a start date is Q4 2022, although Q1 2023 is more realistic.
The current status of ratification can be found here: http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001
How will I be able to get a unitary patent?
The mechanism for getting a UP will be relatively straightforward: applicants will file an application at the European Patent Office (EPO) for a European patent in the usual way. If the applicant wants the application to become a UP, then a request to that effect should be filed within 1 month of grant of the application.
The EPO intends to provide appropriate forms for filing the request and no fee is currently intended. It should be possible to request unitary patent protection for applications that grant at any time after the system comes into effect: this could well include applications that are already pending now.
What will it cost to get a unitary patent?
The filing and prosecution costs will be more or less the same as for any European patent application.
Validation costs for those EPC contracting states which are covered by unitary patent protection (that is, participating EU member states who have ratified the UPC Agreement) will be minimised since only one translation will be required after grant. Validation costs for those EPC contracting states who have not ratified the UPC Agreement, or who are not participating in the system (for example, Spain), or who are not members of the EU (for example, Switzerland or the UK) should be unchanged.
As mentioned above, no fee is intended for requesting unitary patent protection. Renewal fees for a UP are then based on a "top 4" schedule, namely the cumulative renewal fees for a European patent validated in the top 4 member states. Importantly, however, it is not possible to reduce the number of states over the life of the UP: it is all or nothing. The renewal fees are therefore fixed over the life of the UP.
The "top 4" renewal fee schedule and the lack of ability to drop states over the 20 year patent term clearly has a direct effect on the cost effectiveness of the UP. It is likely that a UP will be cost effective if protection is desired in a large number of EU member states but that cost effectiveness will diminish as the number of countries in which protection is desired decreases and/or where the desire for protection changes over the life of the patent. The point at which the UP loses cost effectiveness will likely vary from case to case.
Will the unitary patent be the best choice for protection in Europe?
This will vary from case to case. The UP will have the undoubted advantages of coverage over a very large market and enforcement via a single court action. However, whether it is the best choice will depend on many factors: it may or may not be the most cost effective option; the uncertainties of the UPC in its early years may mean it is more appropriate in some cases not to seek a UP but to go for a traditional European patent and opt-out (more information on opting-out is set out below); proprietors may also wish to retain the flexibility to let patents in certain countries lapse over time to reduce renewal fees. All of these will be factors to take into account when the decision to elect for a UP is made.
Will I still be able to obtain traditional European patents and national patents?
Yes. Traditional (or bundle) European patents will remain available, as will national patents.
A UP is also only available for the EPC contracting states who have signed the UPC Agreement and who have ratified the Agreement. A UP may therefore co-exist alongside validated traditional European patents for those contracting states who have either not ratified the UPC Agreement, or who are not participating in the system (for example, Spain) or who are not members of the EU (for example, Switzerland or the UK).
How will my existing patents be affected?
The default position is that, in addition to the new UP, the UPC will have jurisdiction over traditional European patents. All existing European patents will therefore potentially be caught up in the new system. This also applies to Supplementary Protection Certificates (SPCs). This is good and bad – on the plus side, it will mean they can be enforced in a single action. On the down side, they will be vulnerable to revocation in a new and untested court system.
In order for existing European patents and SPCs not to be affected by the UPC, proprietors must opt their traditional European patents and SPCs out of the jurisdiction of the UPC. The opt-out is effective for the life of the patent or SPC, unless the proprietor decides to opt back in. If an SPC is subsequently granted after a European patent is opted-out then this opt-out also applies to the SPC for the life of the SPC.
The opt-out will be available from the beginning of a provisional period (approximately six months before the UPC officially comes into action) up to the end of a transitional period of seven years (which may be extended up to fourteen years). There will be no official fee for the opt-out.
While we learn how the UPC works in practice, this adds a level of uncertainty and patent holders will be advised to consider opting out, at least for their business critical patents.
National patents are entirely outside the jurisdiction of the UPC.
What happens if I opt out and can I opt back in?
If a patent or SPC is opted out, it will be subject solely to the jurisdiction of the national courts as it would be today – thus it cannot be enforced or revoked centrally in the UPC. However, it will be possible to opt back in if desired. If that is done, there will be no further opportunity to opt back out.
How will the Unified Patent Court work?
The UPC will be a two instance court, comprising local, regional and central first instance divisions, and a single second instance Court of Appeal. The Court of Justice of the European Union should have no more involvement than it currently does in patent cases, where its role is essentially limited to interpretation of relevant EU law (such as the Biotech Directive and SPC Regulation).
The jurisdictional arrangements for the first instance divisions are relatively complex but the basic rule is that infringement cases will be dealt within the local or regional division(s) where the defendant is domiciled or where infringement occurs. Counterclaims for revocation can be brought before local and regional divisions. There are likely to be many local and regional divisions, and these will be important since most cases in the UPC are likely either to be commenced there, or end up there.
The Central Division will have jurisdiction for revocation actions and declarations of non-infringement, as well as limited jurisdiction for infringement actions. It will have at least two locations: Munich and Paris. The London central division has been re-located.
How do I find out more?
Visit our unitary patent and Unitary Patent Court website page to keep up to date with the latest news and developments.
We have included a number of links to key documents and the web pages of organisations involved in the process going forward.
You can also subscribe to our regular patent and trade mark newsletters, which will feature commentary and advice on the latest UP and UPC developments. To subscribe please send your details via our online subscriptions form.
Please feel free to contact us for any more information.
Do I need to do anything before the system comes into effect?
Yes. Existing European patent holders must consider whether to opt their patents out of the UPC. This is not necessarily straightforward: for example, if a traditional European patent has different proprietors in different member states, all proprietors may need to agree to opt out. Similarly, licensees cannot opt out. This could be an issue for a business where it holds an exclusive licence under a business critical patent. In both cases, there may need to be negotiations with the relevant proprietor(s) to effect an opt out.
Where there is an SPC attached to a relevant patent and the proprietor wishes to opt that patent out, that SPC will either automatically also be opted out or, where the SPC may be owned by a different entity, must be opted out by the SPC proprietor in order for either opt out to be effective.
And of course, as the commencement of the system draws near and the option of a UP becomes real, applicants will need to determine whether or not to choose a UP at grant.