Centralised European patent protection and enforcement is coming at last
After years of uncertainty, both the Unitary Patent (UP) and the Unified Patent Court (UPC) will be live from 1 June 2023. These new systems will centralise patent protection and enforcement within many EU countries. Moreover, the new systems will impact all existing granted EP patents and pending EP applications, such that patent proprietors need to make strategic decisions now.
The Unitary Patent
Currently patents granted by the European Patent Office (EPO) must be validated in all of the countries in which the patent proprietor wants to obtain patents. The validation procedure yields individual patents in the countries of interest, which must then be enforced and/or invalidated individually at the national courts.
The UP will provide an option to have a single patent covering multiple EU member states (presently 17 but likely to be more in the future) as an alternative to the current validation route (which will continue).
Some key features of the UP are:
- provides protection in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden (at present)
- requires payment of a single renewal fee
- must meet new translation requirements
- falls under the jurisdiction of the UPC
- requires limitation, transfer, revocation or lapse in all UP member states
Is a UP an option?
To file a request for a UP, the EP patent must:
- have the same claims for each UP member state; and
- have and retain designations for all UP member states (no designations withdrawn)
Requirements and timing of UP request
A request for a UP must be filed within one month of the date of grant of an EP patent. There is no associated official fee. For currently pending EP patent applications it is possible to delay grant to keep the option of a UP open and it is now possible to file an early request for a UP at the EPO.
During a transition period, the patent proprietor will be required to file appropriate translations. For example, if the patent is in English, a translation into any other EU language will be required.
Jurisdiction of the UPC
The UPC is a new centralised court through which:
– a patent proprietor can enforce their European patent against an infringer and
– a third party can seek central revocation of a European patent
Decisions by the UPC will be effective in all UPC member states. Infringement and revocation decisions for non-UPC countries (such as the UK, Spain, Norway and Switzerland) will continue to be made by the national courts.
The UPC brings unknown opportunities and risks and there will thus be a transitional period of at least seven years to provide better certainty for users.
During this period, the national courts of UPC member states will also have jurisdiction over EP patents which are effective in these countries. A patent proprietor can thus choose between centralised patent enforcement before the UPC or enforcement in individual national courts. Similarly, a third party can choose whether to revoke a patent before the UPC or a national court.
During transition, a patent proprietor can request an opt out to remove their EP patents from the jurisdiction of the UPC. The patent proprietor can withdraw this request at a later stage, for example if they wish to initiate a pan-European infringement action. The period for requesting an opt out began on 1 March 2023 and so decisions are needed now.
Ownership may need to be verified before filing an opt out request because the true owner(s) must file the request.
There are various factors to consider when deciding whether to request a UP and whether to opt out existing EP patents from the jurisdiction of the UPC. Different decisions may be appropriate for different patents in a portfolio.
For more information on the UP and the UPC, contact Kate Hickinson, Partner, Appleyard Lees.