Introductory guide to the Unitary Patent (UP) and Unified Patent Court (UPC)

Introduction

Following decades of discussions, the European Union (EU) Patent or so-called Unitary Patent (UP) came into effect on 1 June 2023. Currently, only the following 17 of the 27 states of the European Union are partaking in the system: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. The following 10 states of the European Union are NOT currently partaking in the system: Croatia, Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, Slovakia and Spain.

The Unitary Patent (UP) will utilise the existing European Patent system (EPC) that has been successfully running since 1977 and now has 39 member states**.

The Unitary Patent is not an alternative to the existing European Patent system and Applicants wishing to obtain a Unitary Patent (UP) can only do so by filing an application under the existing European Patent system (EPC).

Advantages

Once a patent has been granted under the existing European Patent system, Applicants currently need to validate (register) their granted European patent nationally in each EU and other European state where they wish the patent to have effect within 3 months of the date of grant. However, the Unitary Patent system will simplify this process by allowing Applicants to simultaneously register their European patent in all 17 participating EU states without the complexity and expense of registering (validating) the patent in each one.

How to obtain a Unitary Patent (UP)

In order to obtain a Unitary Patent, Applicants merely have to register (validate) a patent that has been granted via the existing European Patent system in the EU as a Unitary Patent. The application process and costs up to grant therefore remain exactly the same as those under the existing European Patent system and nothing has changed. Once the European Patent Office (EPO) have granted a European patent, a request for a Unitary Patent and a full translation of the granted patent into any other European language need to be filed at the EPO within 1 month of the date of grant***.

This 1 month period for filing the request for unitary effect and the translation is very short compared with the 3 months that are currently available for validating a granted patent nationally in each European state where the European patent is to have effect. We therefore recommend that Applicants provide instructions as soon as the date of grant is known (i.e. once the European Patent Office have issued a Decision to grant a European patent pursuant to Article 97(1) EPC).

Existing European Patent and Patent Applications

Any European Patent Application which is pending at 1 June 2023 can be validated as a single Unitary Patent within 1 month of the date of grant.

A Unitary Patent cannot be requested for European Patents that were granted more than 1 month before 1 June 2023.

Remedies for missing the deadline for requesting a Unitary Patent (UP)

The 1 month period for filing the request for unitary effect is not extendable unless the date falls on a day when the European Patent Office is closed. A request for restoration of a missed deadline may be filed within 2 months but, in order for the restoration request to be successful, Applicants must demonstrate that the deadline was missed in spite of all due care having been taken. Thus, it is not sufficient that the deadline was simply missed unintentionally and standard of due care required by the European Patent Office is notoriously high.

Nevertheless, some relief to the short 1 month period can be obtained by filing a timely request for unitary effect without a translation. The European Patent Office will eventually set a 1 month deadline for filing the translation. It should be noted that machine translations are not allowed under the rules. It should also be noted that the restoration does not apply in respect of the set deadline.

Applicants who miss the deadline will still have the option to register (validate) a granted European patent nationally in each state where they wish the patent to have effect within 3 months of the date of grant. Most member states of the Unitary Patent should extend this 3 period for cases where an unsuccessful attempt to request unitary effect was made.

Costs

There are no official fees for filing a request for a Unitary Patent and the only costs will be our services and translation fees. Translation costs can be reduced by opting to file a full translation of the Patent into French or German and utilising the French or German translation of the claims that was previously filed at the European Patent Office prior to grant.

Renewal fees

Once a European Patent has been granted and a request for unitary effect has been filed, renewal fees will need to be paid annually in order to keep the Unitary Patent in force. These renewal fees increase exponentially from 35 Euros for the 2nd year to 4,855 Euros for the 20th year. Whilst the renewal fees are relatively high, they represent good value compared with the renewal fees that would be payable to the national patent offices in each of the 17 participating countries.

The Unified Patent Court (UPC)

The Unified Patent Court (UPC) has been established to centrally handle invalidity and infringement actions involving Unitary Patents. Whilst this is good news because it avoids the expense and complexity of bringing actions in each of the 17 participating states, it has an important ramification on existing European Patents and such European Patents granted up to 1 June 2030. This is because an invalidity action that is successfully brought at the Unified Patent Court (UPC) will have effect against all national Patents in each member state of the Unitary Patent system.

UPC Opt outs

Clearly, the option of launching a central attack against a Patent in up to 17 states is extremely attractive to competitors. Patentees can avoid the risk of this happening by filing a request to opt out of the Unified Patent Court (UPC) system. A request to opt out can be filed at any time before an invalidity or infringement action is commenced at the Unified Patent Court. However, a request to opt out cannot be filed if a request for unitary effect has been filed. It is also possible to file opt outs on pending European Patent applications, although we think that the possibility of a central revocation action against a pending application is remote whilst the option of a regular European opposition is still available up to 9 months from the date of grant. Any applications which have been opted out will be opted back in once a request for unitary effect is filed.

If a patent is opted out it cannot be centrally revoked by bringing an invalidity action at the Unified Patent Court (UPC). However, infringement actions cannot be centrally brought against competitors at the Unified Patent Court (UPC) if a patent has been opted out. In order to do this, it would be necessary to opt the Patent back in.

Patentees will need to weigh up the above pros and cons when deciding whether to opt out as well as some more detailed factors which are not mentioned here. There is no correct scenario to fit everyone and thus it is not possible to provide blanket advice to all clients.

Frequently asked questions (FAQs)

Q: European Patents are expensive: Can we save money by filing a Unitary Patent (UP) instead?

A: No, you still have to file the same European Patent as always and there is no choice. Once the European Patent has granted it can be validated in 25 participating EU states by requesting a Unitary Patent (UP). This is far more cost effective than the existing process where you have to record grant in each state individually.

Q: Some German Patent Attorneys have told us we should not be using UK Patent Attorneys for filing European Patents because of Brexit and the fact that the United Kingdom is not is not in the Unitary Patent (UP) system. Is this true?

A: No, IPEY and other firms of UK Patent Attorneys that have attorneys qualified to act before the European Patent Office (EPO) are able to act as representatives on Unitary Patents and can carry out all procedures including filing requests for Unitary Patents and dealing with all subsequent procedures including renewals and assignment recordals.

Q: Will we be issued with a Certificate showing that we have a Unitary Patent?

A: Yes, an electronic certificate will be issued by the EPO once a request for unitary request has been accepted.

Q: There are 27 European Union (EU) states but you say only 17 are participating in the Unitary Patent (UP) system. What is happening about the other 10 states and will our European Patent Cover those states when they join the system.

A: Croatia, Spain and Poland have not yet signed up to the UP system. Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia have signed up to the UP system but have not yet ratified the system into their national laws. This should happen soon and European Patents granted after the date on which the law has been ratified by any particular state will cover that state. Existing Unitary Patents will not cover states which subsequently join the system.

Q: We have a pending European Patent application: do we need to think about opting out?

A: The main benefit of opting out is that it removes the risk that a single invalidity action to revoke your European Patent application could be launched at the Unified Patent Court (UPC). Any court action is costly and thus third parties are far more likely to try to revoke the patent by filing a less expensive Opposition at the European Patent Office once the application has granted. Also, until an application is granted, the scope of the claims is not finalised and so you could always amend the claims in the unlikely event that a revocation action is brought at the UPC.

Q: We have a granted European Patent which we validated in France, Germany, Italy and the United Kingdom about 5 years ago. Do we need to be opted out or opted in to the Unified Patent Court (UPC)?

A: There is no right answer to this question. All granted European Patents that are still in force are automatically opted in. The main advantage of being opted in is that you can bring a single infringement action against a competitor at the Unified Patent Court (UPC) even though you do not have a Unitary Patent (UP): the judgement of the Court will then be effective in France, Germany and Italy but not the UK (because the UK has left the European Union (EU)). If you opt out, then you cannot bring a single infringement action against a competitor at the Unified Patent Court (UPC) and you have to go to the expense of bringing an infringement action at the Court in each country.

However, the main disadvantage of being opted in is that a competitor can file a single invalidity action to revoke your European Patent at the Unified Patent Court (UPC): again, the judgement of the Court will be effective in France, Germany and Italy but not the UK. You therefore need to consider these main factors when deciding whether to be opted out or opted in to the Unified Patent Court (UPC). If you opt out, then your competitor cannot bring a single invalidity action to revoke your European Patent at the Unified Patent Court (UPC) and they would have to go to the expense of bringing an invalidity action in each country.

Q: We think that being opted out is the best choice because our European Patent cannot be centrally revoked in France, Germany and Italy. However, what if we then want to bring an infringement action against a competitor in France, Germany and Italy?

A: If you opt out, then you cannot bring a single infringement action against a competitor at the Unified Patent Court (UPC) and you have to go to the expense of bringing an infringement action at the Court in each country.

However, you are able to opt back in, so you can then bring a single infringement action against a competitor at the Unified Patent Court (UPC). Once you have opted back in, it then not possible to opt back out again i.e. it is only possible to opt out once.