Does the UPC offer advantages for SMEs and universities?
The Unitary Patent (UP) offers patent proprietors the option of having a single patent covering multiple EU member states (18 at the time of writing, likely to be more in the future) as an alternative to the traditional route in which a granted European patent is separately validated in different countries (which will continue).
The primary advantage of the UP to SMEs and universities is the ability to obtain broad European coverage for significantly reduced cost. The renewal fees for a UP are roughly equivalent to the aggregate renewal fees that would be paid if the patent were validated in four countries meaning that, in effect, coverage is obtained in 18 countries for the price of four. Opting for a UP also negates the need to comply with various national validation requirements, leading to further cost savings and a reduced administrative burden.
For proprietors such as SMEs and universities, who may have limited funds, the UP may therefore offer a way of obtaining patent protection in a larger number of countries at lower costs than would be the case via the traditional route of national validations. The wide territorial protection may also offer increased flexibility when commercialisation of the underlying technology (and hence identification of the relevant key jurisdictions) is still several years away. It can also enhance the value of the IP, useful for those looking to monetise their portfolio or for applicants for whom a significant proportion of their value is tied to intangible IP assets.
Below we have set out some of the practical considerations for an SME or university when deciding whether to obtain a UP.
Enforcing a patent
UPs are restricted to being enforced before the Unified Patent Court (UPC). It is not possible to litigate a UP before a national court or opt out of the UPC’s jurisdiction. The UPC is a pan-European court whose decisions take effect in all member states covered by the patent. A perceived downside of litigating a patent before the UPC is that, if the patent is found partially or fully invalid, that finding applies to all member states covered by the patent, leading to the risk of central revocation. This differs from traditional European patents litigated before a national court, which are treated as separate national rights, meaning that any adverse finding by the court as to the patent’s validity would only take effect in the member state for that court.
However, the other side to this coin is that any finding of infringement by the UPC also applies to all member states covered by the patent, leading to the possibility of powerful pan-European remedies such as injunctions. Central enforcement of a UP before the UPC is therefore a highly cost-effective alternative to multi-jurisdictional litigation in several EU countries, and may make enforcing patents more accessible for proprietors such as SMEs and universities.
Renewal fees
As mentioned above, there is a single renewal fee payable for a UP. The single fee is based on a fee proposal called the “true TOP4” which tracks the sum of the post-grant renewal fees that would be payable in the four most commonly validated countries over the entire patent term.
If you want patent protection in many European countries, the UP provides a route for you to do this, providing you with the option of obtaining protection in 18 countries for approximately the price of four. The traditional route of validating the European patent in each country separately can still be pursued for those cases where fewer countries are desired.
Translations
During a transitional period (of six years running from June 2023, which period may be extended to 12 years), any patent proprietor wishing to request a UP will have to file a translation of the patent specification:
- Into English if the language of the proceedings before the EPO was French or German, or
- Into any other official language of an EU member state if the language of the proceedings was English
For SMEs, natural persons, non-profit organisations, universities and public research organisations, cost reductions by means of compensation may be available for the translation costs if they:
- Have their residence or principal place of business in an EU member state, and
- Filed the European patent application or Euro-PCT application leading to the UP in an official EU language other than English, French or German
The compensation shall be paid in the form of a lump-sum. It is currently set at €500 and requires the applicant to make a declaration that they satisfy the relevant criteria.
Please do not hesitate to get in touch for any further information or if you have any questions on how the UP / UPC could be relevant to your business.
