The forthcoming launch of the Unified Patent Court (UPC) and the Unitary Patent (UP) is undoubtedly the most significant development in European patent law and practice since the introduction of the European Patent Convention in 1977.
The aim of the UP and UPC system is to improve access to the patent system in Europe, by reducing the cost and complexity of obtaining and enforcing patent protection in the participating EU member states.
The Unitary Patent (UP) is an extension of the existing European patent system, which will offer applicants a new option to validate a granted European patent as a single unitary patent right that is effective in all EU member states that participate in the new system.
The Unified Patent Court (UPC) will be a forum for hearing infringement and validity disputes relating to UPs and classical European patents, with the power to deliver judgements that will be effective in all of the participating EU member states.
With expert European Patent Attorneys in every major technical discipline and an in-house litigation team including Patent Attorney Litigators who will be able to represent clients at the UPC, HLK is uniquely placed to help our clients to navigate the complexities of the new system, from formulating effective IP strategies that make best use of the opportunities presented by the new system to developing creative approaches to dispute resolution to secure the most favourable outcomes.
If you have any questions on the Unitary Patent or the Unified Patent Court, please contact up@hlk-ip.com.
We considered the factors which may help you decide whether to opt out an individual patent in our earlier blog. However, there is also a wider question of opt out strategy across your EP portfolio.
There are three basic strategies available:
In anticipation of the Unitary Patent (UP) and the Unified Patent Court (UPC), European patent owners should be considering whether or not to opt out their existing and future European patents and applications from the jurisdiction of the UPC.
With the launch of the Unified Patent Court (UPC) and the Unitary Patent (UP) fast approaching, there is a large amount of new terminology to get to grips with, which can be initially confusing. In this blog, we take a look at some of the common terms and phrases relating to the UPC and UP system and break down what they mean. Terms in italics are also defined in this Glossary.
The UPC has moved one step closer following a meeting of the Administrative Council on 8 July.
The UPC’s Rules of Procedure and Table of Fees were adopted at the meeting and will come into effect on 1 September 2022. The final Rules of Procedure will be published in the coming weeks, before they come into effect.
The Unified Patent Court (UPC) Administrative Committee has confirmed that many UK-based European patent attorneys will be able to represent parties at the UPC. With a team boasting experienced patent attorneys and litigators, HLK will therefore be ideally placed to represent parties in UPC litigation.
After years of delay caused by legal challenges in Germany to ratification of the Agreement on a Unified Patent Court (also known as the “UPC Agreement” or “UPCA”), it now seems that the Unified Patent Court (UPC) and the European Unitary Patent (UP) will come into effect in 2022. Indeed, the UPC and the European Patent Office are indicating that the UPC is expected to commence operations in mid-2022.
We can now report that the Provisional Application Period of the UPC agreement started on 19 January 2022, after Austria deposited its instrument of ratification of the Protocol on Provisional Application of the UPC agreement on 18 January 2022.
A Unitary Patent will be a single patent right that is effective in all the EU member states that are part of the Unitary Patent and Unified Patent Court system.
The Unified Patent Court will be a single court for handling infringement and validity disputes relating to Unitary Patents. The Unified Patent Court will have exclusive jurisdiction for disputes relating to Unitary Patents. During a transitional period, the Unified Patent Court and the national courts will have joint jurisdiction for disputes relating to traditional European patents, meaning that an infringement or validity action may be brought in either the UPC or the relevant national court (subject to certain restrictions). After the transitional period the UPC will have exclusive jurisdiction for all disputes relating to infringement or validity of European patents.
It is expected that the Unitary Patent and Unified Patent Court will come into effect in late 2022, possibly 1 October 2022.
The actual date on which the UP and UPC system comes into effect will be determined by the date on which Germany ratifies the UPC agreement. The UPC and UP system will come into effect on the first day of the fourth month after Germany deposits its instrument of ratification of the UPC Agreement.
The Unitary Patent is an extension of the existing European patent system.
The application process is unchanged – a patent application is filed at, examined, and granted by the European Patent Office.
After grant, the resulting European Patent can be validated as a Unitary Patent by filing a request for unitary effect, accompanied by a translation of the patent into English (if the European patent was granted in French or German) or an official language of an EU country (if the European patent was granted in English) within one month of the date of grant of the European Patent.
No. However, re-establishment of rights may be available, if the patent proprietor can prove that the deadline was missed despite all due care required by the circumstances having been taken.
It is expected that 17 EU member states (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden) will initially be part of the UP and UPC system, with more joining the system over time. Thus, the first Unitary Patents will cover these 17 states.
No, a Unitary Patent can only cover the states that were part of the Unitary Patent system at the time of grant of the European patent.
The main benefits of the Unitary Patent stem from its nature as a single unitary right.
Obtaining a Unitary Patent will simpler than validating a European patent in multiple different EPC member states.
As a Unitary Patent is a single right, it will be subject to a single renewal fee, payable annually to the European Patent Office. It is expected that the annual renewal fees for a Unitary Patent will be less than the combined annual renewal fees for four or more individual national validations.
Enforcement of a Unitary Patent in the Unified Patent Court will be simpler and more cost effective than enforcing multiple separate national validations in the relevant national Courts and will lead to a single decision that will be effective in all the states covered by the Unitary Patent.
The unitary nature of the Unitary Patent is also its biggest disadvantage.
If a Unitary Patent is held to be invalid, then the protection it affords will be lost in all the states covered by the Unitary Patent. Similarly, if the Unitary Patent lapses due to non-payment of a renewal fees, the protection afforded by the Unitary Patent is lost in all the states it covers.
Additionally, as a Unitary Patent is a single right, it is not possible to transfer part of a Unitary Patent (e.g., a notional part of the Unitary Patent that covers a particular country) to another party; a Unitary Patent must be transferred as a whole.
To obtain patent protection in the UPC member states that are not part of the UP/UPC system it will be necessary to validate the European patent in the individual states in which protection is desired after grant (as is the case now).
No, European patents that were granted before the Unitary Patent and Unified Patent Court come into effect cannot be converted into Unitary Patents.
No, a Unitary Patent cannot be converted into a bundle of national patents.
If the Rule 71(3) communication (notice of allowability) has already been issued, it may be possible to take action to delay the grant of a patent until the Unitary Patent system has come into effect, e.g., by making minor amendments to the text intended for grant and/or delaying responding to the Rule 71(3) communication using the EPO’s further processing mechanism.
If the deadline for responding to the Rule 71(3) communication has not yet passed when Germany deposits its instrument of ratification, it will be possible to request delayed grant under a new EPO procedure, to ensure that the option of validating the European patent as a Unitary Patent after grant.
Additionally, after Germany deposits its instrument of ratification, under another new EPO procedure it will be possible to request unitary effect early under for cases where a Rule 71(3) communication has been issued, to ensure that the resulting European patent is validated as a Unitary Patent as soon as the Unitary Patent system comes into effect.
There will be no official fee for validating a granted European patent as a Unitary Patent. However, because it will be necessary to file a translation of the granted patent (either into English, for European patents granted in French or German, or an official language of an EU member state, for European patents granted in English) there will be a translation cost associated with obtaining a Unitary patent.
A single renewal fee will be payable to the European Patent Office every year to maintain a Unitary Patent in force.
No. Because of the unitary nature of the Unitary Patent, it can only be renewed as a unitary right. If a renewal fee is not paid the Unitary Patent will lapse, leading to a loss of patent rights in all the countries covered by the Unitary Patent.
No, but it will be possible to obtain national validations in states that are not party to the UP and UPC system (e.g., the UK) in addition to a Unitary Patent.
That depends on national law. We understand that it will be possible to obtain a national patent (via a national patent application) and a Unitary Patent (via a European patent application) for the same invention in some states that are part of the UP/UPC system.
Yes. Although the Unitary Patent is a single patent right covering multiple different countries, it can be licensed on a per-country basis.
The UPC will have the power to issue decisions that are effective in all the EU member states that participate in the Unitary Patent and Unified Patent Court system. Thus, if the UPC finds a European patent or UPC to be invalid, it can revoke the patent centrally, leading to a loss of patent protection in all the participating EU member states. This is known as central revocation.
During a transitional period lasting up to 14 years from the start date of the Unified Patent Court, any granted European patent or pending European patent application may be opted out of the jurisdiction of the Unified Patent Court, such that any proceedings relating to infringement or invalidity of the patent must be brought in a national Court of a state in which the European patent has effect.
The main benefit of opting out of the UPC’s jurisdiction is that it removes the risk of central revocation, i.e., the loss of patent protection in all the EU member states that participate in the UP/UPC system as a result of a successful invalidity action at the UPC.
European patents and patent applications can be opted out of the UPC’s jurisdiction at any time up to one month before the end of the transitional period, as long as the patent or application has not been the subject of proceedings in the UPC before the request to opt out is registered.
Additionally, there will be a “sunrise period” immediately before the UPC comes into operation within which it will be possible to lodge opt out requests. Lodging an opt out request during the sunrise period should ensure that the relevant patent or application is opted out of the UPC’s jurisdiction from the outset and is thus not vulnerable to a validity challenge that could lead to central revocation.
A European patent that has been opted out of the jurisdiction of the UPC can only be opted back in if no action in relation to the European patent has been brought before a national Court. This means that an infringer could initiate an action (e.g., for a declaration of non-infringement) in a national Court, which would prevent the patent proprietor from bringing an action for infringement in the UPC, thus obliging the patent proprietor to pursue individual infringement actions in the national Courts.
The sunrise period is a period, expected to last three months, immediately before the UPC comes into operation during which it will be possible to lodge requests to opt European patents and patent applications out of the jurisdiction of the UPC, to ensure that the relevant patents or applications are opted out of the UPC’s jurisdiction from the outset and are thus not vulnerable to a validity challenge that could lead to central revocation.
The transitional period is a period initially lasting 7 years, but extendable by up to a further 7 years, during which the UPC and the national Courts of the EU states participating in the UP/UPC system will share jurisdiction for proceedings relating to traditional (i.e., non-unitary) European patents.
During this period, it will be possible to bring proceedings relating to infringement or validity of a non-unitary European patent at either the UPC or at the national Courts of the participating member states, subject to certain conditions.
It will also be possible to opt European patents (but not Unitary Patents) out of the UPC’s jurisdiction during the transitional period, such that proceedings relating to infringement or validity of opted out patents can only be brought in the national Courts.
After the transitional period the UPC will have exclusive jurisdiction over Unitary Patents and traditional, non-unitary European patents.
Yes, but it will not be possible to opt out more than once; if a patent is opted out and subsequently opted back in (by withdrawing the opt out), it cannot be opted out again. Moreover, it will not be possible to opt back in if an action has been brought in a national Court in relation to the patent while it was opted out.
Yes, it will be possible to opt European patents and European patent applications out of the jurisdiction of the UPC at any time up to one month from the end of the transitional period.
A request to opt out of the UPC’s jurisdiction must be lodged at the UPC by the proprietor(s) of the European patent or patent application or their representative. If the requestor (i.e., the person lodging the opt-out request) is not an authorised representative before the UPC, a mandate authorising the requestor to lodge the opt-out request on behalf of the proprietor(s) must also be filed.
Yes, it will be possible to lodge “bulk” opt-out requests covering multiple European patents or patent applications. HLK will be offering a bulk opt out service. Please speak to your usual HLK contact or email optout@hlk-ip.com for more information.
Yes, provided that the other proprietor(s) agree. As the request to opt out must be lodged by or on behalf of all proprietors, a European patent or patent application can only be opted out if all proprietors agree to do so.
No, only the proprietor of the patent can opt it out. If you are a licensee you should discuss opting out licensed patents with the licensor.
The Unified Patent Court will be made up of a Court of First Instance and a Court of Appeal. The Court of First instance will have Central Divisions in Paris, Munich and one other European city (still to be decided), and additional Local and Regional Divisions in individual member states. The Court of Appeal will be in Luxembourg.
Cases in the Court of First instance will generally be heard by a panel of three judges, whereas cases in the Court of Appeal will generally be heard by a panel of five judges.
Cases will be divided amongst the three Central Divisions of the Court of First Instance according to their subject matter. The Munich Central Division will handle cases relating to mechanical engineering and the Paris Central Division will handle cases relating to electronics, computer science and physics. A third Central Division, once established, will handle cases relating to chemistry and pharmaceuticals.
In principle, where an action can be brought will depend upon the nature of the action and the location of the defendant or alleged infringement (where applicable).
Infringement actions, actions for injunctions, actions for damages derived from provisional protection, actions relating to prior use of a patented invention and actions against foreign defendants can be brought either before the Local or Regional Division of the state in which the infringement occurred, or before the Central Division.
Such actions against European defendants will take place at the Local/Regional division in which infringement occurred or where the defendant is domiciled. If the state concerned does not host a Local Division and does not participate in a Regional Division, actions shall be brought before the central division. Actions for declarations of non-infringement and actions for revocation, on the other hand, must be brought before the Central Division.
In the case of counterclaims for revocation, a Local or Regional division will have the discretion to (a) proceed with both the infringement action and the counterclaim; (b) refer the counterclaim to the Central Division and suspend or proceed with the infringement action; or, with the agreement of the parties, (c) refer the case for decision to the Central Division. Thus, the possibility for “bifurcation” will arise, in which a Local or Regional Division decides on the question of infringement of a patent and the Central Division decides on the question of validity of the patent, potentially in different languages.
The Unified Patent Court will have competence to decide on issues relating to European patents and patent applications, Unitary Patents, and supplementary protection certificates. In particular, the UPC will be able to deal with actions for actual or threatened patent infringements and related defences, declarations of non-infringement, actions for revocation of a European patent or Unitary Patent, and counterclaims for revocation of a patent in infringement proceedings.
The Unified Patent Court will be able to issue decisions on infringement and validity and remedies such as injunctions and damages that are effective in all the EU member states that participate in the UP/UPC system.
The UPC may revoke a patent on the following grounds:
A key feature of the Unitary Patent is that it will have unitary effect in all the countries that it covers, and this requires that the claims are the same in all of the countries covered. Thus, if there is a national prior right in one country that can only be overcome during prosecution of a European patent application by having different claims for that country, a resulting granted European cannot be validated as a Unitary Patent.
We understand that if a Unitary Patent is held to be invalid in one participating country over a national prior right in that country, then the whole UP will be held invalid.
The Unified Patents Court is intended to provide a cost effective and procedurally straightforward mechanism obtaining a decision that is effective and enforceable throughout the participating states.
For example, instead of bringing separate actions for patent infringement in the national Courts of the countries in which an infringement is believed to have taken place, the proprietor of a European patent or Unitary Patent will be able to bring a single action at the UPC, which could lead to an injunction that is effective in all the participating states.
Similarly, a successful invalidity action at the UPC will result in revocation of the patent in all the participating states.
For patentees, a disadvantage of using the UPC is the possibility of central revocation – i.e., the loss of patent protection in all participating member states in the event of a successful challenge to the validity of a patent.
Because the UPC is a new Court, it is difficult to know at this stage how procedural issues such as injunctions and bifurcation will be handled, or how the UPC will approach potentially controversial issues such as patent eligibility, added subject matter, extension of subject matter and inventive step. Thus, at least in the early stages of operation of the UPC there will be a degree of uncertainty over how such issues will be dealt with.
For defendants in infringement actions, the issue of bifurcation may be of concern, as it is possible that an injunction preventing them from continuing to operate could be issued before a decision has been reached as to whether the patent in question is valid.
Parties to litigation at the UPC can be represented by a lawyer authorised to practise before a Court of a participating member state, or by a European Patent Attorney with an appropriate litigation qualification. HLK’s UPC litigation team includes experienced European Patent Attorneys who hold the necessary litigation qualifications, backed by our team of expert specialist patent litigators. We are therefore well placed to assist our clients with all their UPC litigation needs.
The language of proceedings will usually be the local language of the local/regional division hearing the case or the language of the patent.
Bifurcation occurs when a Local or Regional Division hears and decides on an action for infringement of a patent and another Division hears and decides on an action (e.g., a counterclaim) for invalidity of the same patent.
Yes, decisions of the Court of First Instance can be appealed to the Court of Appeal.
During the transitional period it will be possible to opt European patents out of the jurisdiction of the Unified Patent Court, such that any action in relation to such patents must be brought in the national Courts. After the transitional period, the only way to avoid the jurisdiction of the Unified Patents Court will be to avoid filing European patent applications, and instead seek patent protection in the European countries of interest by way of individual national patent applications filed at the relevant national patent offices.
If you have any questions on the Unitary Patent or the Unified Patent Court, please contact up@hlk-ip.com.
The forthcoming launch of the Unified Patent Court (UPC) and the Unitary Patent (UP) is undoubtedly the most significant development in European patent law and practice since the introduction of the European Patent Convention in 1977.
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