Here we examine the background and key points relating to the Unified Patent Court and Unitary Patents
Background
For many years it has been possible to obtain a single registered trade mark or registered design which covers the whole of the European Union (EU). For more than 10 years, the EU worked on providing an equivalent system for patents, and it is now possible to obtain a Unitary Patent (UP) as a single patent right covering the majority of EU countries.
Please note that these changes did not affect the long-standing process for applying for, and obtaining grant of, European patents at the European Patent Office (EPO).
Unitary Patents – key features
Unitary Patents can be registered by the EPO following grant of a European patent. Whether or not you may wish to obtain grant of a UP will depend on a number of factors. For further details on these factors, please see here.
A “request for unitary effect” must be filed at the EPO within one month of the grant of the European patent. For an initial transitional period of at least six (6) years, for European patents granted in English, a translation of the granted patent into one other EU language must also be filed when requesting unitary effect. For European patents granted in French or German, a translation of the granted patent into English must be filed.
A UP can be now obtained based on any European patent at its grant stage.
A UP obtained currently will cover 17 EU member states* but UPs may eventually cover up to 24 of the 27 EU member states as further states that have signed the UPC Agreement complete its ratification. (A UP will not cover Croatia, Spain or Poland as they have not signed up to the UPC Agreement.)
Protection in non-EU countries, including UK, Switzerland, Norway and Turkey, is available via conventional national validation of a granted European patent.
Protection in individual EU countries, including Croatia, Spain and Poland, also continues to be available via national validation of a granted European patent.
Renewal fees for UPs are payable at the EPO.
Renewal of a UP will be more expensive than renewing three (3) individual national validations of an EP patent but will be significantly cheaper than renewing five (5) or more individual national validations.
An EPO opposition can still be filed within nine (9) months of grant of a European patent for which a request for unitary effect has been filed.
*Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden
Unified Patent Court (UPC) – key features
The UPC has exclusive jurisdiction in litigation involving UPs. Judgments are enforceable in all EU countries signed-up to the UPC Agreement.
The UPC also has jurisdiction over “classical” European patents that have are granted and which are validated in at least one EU country that has signed-up to the UPC Agreement.
However, there is a transitional period of at least seven (7) years from the opening of the court in 2023 during which a patentee may “opt out” a granted European patent from the court’s jurisdiction. Opting-out will mean that a European patent will not be vulnerable to central revocation by the UPC but will deprive a patentee of the possibility of central enforcement of the patent in all EU countries signed up to the UPC Agreement. Opting out is possible for “classical” European patents validated nationally in at least one EU country that has signed up to the UPC Agreement. It is not possible to opt-out a unitary patent, as the UPC has exclusive jurisdiction for UPs.
Opting out from UPC jurisdiction
An “opt-out” must be filed with the Registry of the UPC (not at the EPO). There is no official fee for requesting an opt-out.
Only the current owner(s) of the European patent (or their authorised representative) can file an opt-out.
The opt-out must apply for all EPC states and is possible for “classical” European patents validated nationally in at least one EU country that has signed up to the UPC Agreement. It is not possible to opt-out a unitary patent, as the UPC has exclusive jurisdiction for UPs.
An opt-out can be withdrawn once, i.e. an opted-out patent can be opted back into the jurisdiction of the UPC once only and there is no official fee for doing so.
Whether or not to opt-out should be considered on a case by case basis. However, in general, if cost reduction and possibility of pan-EU enforcement outweighs the risk of central revocation, it may make sense not to opt out. On the other hand, if the risk of central revocation outweighs the benefits of cost reduction and pan-EU enforcement, it may make sense to opt out.
More information regarding opting-out may be found here.
How Dehns can help
Dehns is able to obtain UPs and act on your behalf before the UPC. Dehns has a large team of around 80 representatives authorised to act before the Unified Patent Court and we have experience of conducting matters before that court and its own Court of Appeal.
Dehns’ experts can guide you through the considerations and implications of whether or not to opt out any granted or pending European patents, in addition to advising on UPC revocation and infringement proceedings. More information on our dispute resolution services is available here.
If you require more detailed advice, or have any questions, please contact us at mail@dehns.com.
