What Is The Unified Patent Court?

A new European Unified Patent Court (“UPC”) is coming into force on June 1, 2023 (“Effective Date”). This notice explains some of the upcoming choices that need to be made with regard to European patent portfolios, to provide a high level overview of the UPC process, as well as explain a few of the advantages and disadvantages. Much of the below information was provided to us by our European colleagues, who possess extensive European patent expertise.

What is the UPC?
The UPC is a new centralized court system for litigation (infringement, invalidity, and revocation actions, among others) of new and existing European (“EPO”) patents. The UPC will consist of three central divisions based on patent subject matter: 1) Life Sciences and Chemistry (London office), 2) Mechanical (Munich office), and 3) Electronics, Software, Physics and Textiles (Paris office). Participating countries can have local and regional divisions as well. The Luxembourg office will serve as the Court of Appeal.

What is a Unitary Patent?
A Unitary Patent (“UP”) is new type of patent which provides protection of an invention across all Participating European countries, in a single validation/prosecution, rather than various, individual national validations/prosecutions. Currently, 17 countries agreed to participate in the UPC, including Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

Some Advantages/Disadvantages to the UPC
Some advantages and disadvantages may include the following (this list is not all-inclusive):

Advantages

Disadvantages

An Applicant/patent holder only has to defend and/or prosecute in a single location which may be cost efficient in comparison to the current system where an Applicant/patent holder may have to defend the patent in various, separate litigations in each nationally validated country where litigation is filed, which may become costly; The prosecution costs may be lower than the current national validation process (depending on how many countries in which protection is sought); Maintenance fees may be lower; and Prosecution may be quicker, possibly producing a decision on the merits within 12-15 months.

One of the primary disadvantages is that a UP or patent under the UPC jurisdiction would be subject to a single, centralized attack. This means if the Applicant/patent holder loses an infringement, invalidation etc. action in the UPC, the decision rendered would apply in all participating countries. Therefore, challengers and/or infringers would only need to file one action to knockout the patent in all participating countries. Whereas, currently challengers and/or infringers would have to file actions in each nationally validated country, which could produce different results in each case; There is currently no case law/prior decisions within the UPC; therefore, outcomes would be unpredictable. A UP can be licensed on a “country-by-country” basis; however it cannot be assigned on a “country-by-country” basis; rather it can be assigned under a single assignment applying to all participating countries; If an Applicant/patent holder is only interested in obtaining protection in a few of the participating countries, it may be more cost-efficient to seek individual national protection in those countries; and Defending a centralized attack in the UPC may be more costly than the current process of validating and defending in a few, selective countries.

 

How Does the UPC Apply to You?
Unless patent holders of existing EPO patents and/or Applicants of published patent applications formally “opt-out” of the UPC, the existing patents/patent applications will by default, be under the exclusive jurisdiction of the UPC. In particular, the UPC will apply to existing EPO patents that are validated in selected European countries. The UPC will also apply to any EPO patents granted on patent applications which recently received a Notice of Intention to Grant a European Patent or which have been filed after the Effective Date. The three (3) month period prior to the Effective Date is referred to as the “sunrise period” where patent holders and/or Applicants have a choice to freely “opt-out” of the UPC. Applicants of current and future EPO patents may also “opt-out” after the sunrise period during a seven (7) year transition period, as long as no action relating to those patents has been filed at the UPC. To “opt-out” Applicants must file an online application with the UPC Registry. There is no official/administrative fee for this application.

After “opting-out,” Applicants and patent holders have a one-time opportunity to “opt-in” any time (even after grant) during the transition period as long as a litigation has not already been brought before a national court.

If Applicants wish to transform their current applications that are to be granted EPO patents, to UP’s, Applicants can either: 1) on or after January 1, 2023, file a request for Unitary Effect within one month of receipt of a Notice of Intention to Grant a European Patent (71(3) EPC communication); or 2) on or after January 1, 2023, but before the deadline to respond to the EPC Communication, file a request to delay, until the Effective Date, the decision to grant the EPO patent.

Finally, going forward, Applicants may avoid the UPC altogether by filing national applications.

In summary, moving forward there are several options with respect to current and future European patent portfolios:

1. affirmatively “opt-out” all or some of your existing EPO patents and published patent applications;
2. do nothing with respect to all or some of your existing EPO patents and published patent applications which will by default be under the exclusive jurisdiction of the UPC;
3. seek UP’s in a) EPO patent applications which received a Notice of Intention to Grant a European Patent within one month of receipt thereof or in which a request to delay the grant of the EPO patent has been filed, and/or b) future EPO applications; and/or
4. file national patent applications in select European countries.

There are also many UPC nuances to be considered, that could be further discussed during a consultation with Hoffmann & Baron, LLP.

Hoffmann & Baron, LLP is a full-service law firm specializing in all areas of intellectual property, both domestically and internationally, since 1984. We safeguard intellectual property assets through procurement, litigation, counseling, opinions and licensing. What sets us apart is our personalized attention and ability to customize our services to fit the requirements of each client. Hoffmann & Baron, LLP has offices in New York, New Jersey and Washington D.C.