Final destination: Unified Patent Court?

Monday 21 March 2016

21 March 2016

In the space of 15 minutes, Paul Misselbrook summarised all we need to know about the Unified Patent Court (UPC) and the Unitary patent (European patent with unitary effect or EPU) at Appleyard Lees’ recent Tackling Technology Transfer Conference.

Hosted at the Museum of Science and Industry (MoSI), our conference took place on the site of the world’s first railway station, Manchester Liverpool Road station.

Although it has not been as long as the years which have passed since the opening of Manchester Liverpool Road station (15 September 1830 for those interested), after a still respectably long 40 odd years of discussions and negotiations the movement toward a unified patent right in Europe appears to have finally gained enough momentum to reach its final conclusion.  This final conclusion will take the form of the European Union Patent Package (EU patent package), likely to come into force sometime between 2017 – 2020.  Paul’s message on this was clear:  the EU Patent Package is coming, and we need to be prepared.

The EU patent package includes two components:

  • Unitary patent (EPU); and
  • Unified Patent Court (UPC).

The Unitary Patent will be an additional option for an applicant pursuing patent protection in Europe.  Applicants already have the option of obtaining national patents granted through the national filing route or the European patent system at the EPO.  Presently, the EPO only offers a unitary application system.  After grant it is necessary to classically validate the patent into a bundle of national rights.  These classic validations are treated separately, and infringement and invalidity actions must be taken in each country.  For the countries covered by the Unitary Patent, once the EU patent package is in force, applicants before the EPO will have a further option of obtaining a single, unitary right after grant as well.  If a unitary patent is not chosen, and for states not signed up to the EU patent package, applicants will still be able to obtain patent protection via the classical validation route in each EPO state as now.

Advantages of the Unitary Patent are:

  • Covers most of Europe (those signed up to the EU patent package) which is in contrast with the state-wide coverage of classically validated national patents of the present European patent system
  • Single validation and renewal costs so easier to manage and potentially cheaper
  • Single court (UPC) so no need to battle it out in a number of courts, potentially saving legal costs

Disadvantages of the Unitary Patent are:

  • Single renewal fee so no way to “drop” certain states to reduce renewal costs
  • Single court (UPC) so if the decision goes against you at the UPC, it’s applicable to most of Europe (those signed up to the EU patent package)

The UPC will be a new court with jurisdiction covering all the states signed up to the EU patent package.  Any infringement or invalidity disputes relating to a Unitary Patent will be decided before the UPC.  Because the court is new, there will be a lot of uncertainty, at least initially, and applicants will need to factor the effect of the UPC on infringement and revocation proceedings when making a decision to opt for a Unitary Patent.

In addition, the UPC will automatically take jurisdiction in the participating states for all infringement and invalidity proceedings involving any patent granted through the European patent system (i.e. by the EPO), whether they are an already granted classical validation or are granted after the UPC begins.  This automatic change that will occur overnight when the UPC begins could shift the landscape significantly for patentees, some of which will have patents filed long before the UPC was ever considered.

Therefore there will be a “transitional period” during which patentees can “opt-out” of the UPC.  If “opted-out”, infringement and invalidity proceedings relating to a classical validation will continue to be contested in the respective national procedures, not the UPC.

During the event, an interesting question on how this whole EU patent package might be affected if “Brexit” happens came up.  Only members of the EU can sign up to the EU patent package so if “Brexit” happens, the UK could no longer be part of the Unitary Patent or UPC.  Brexit would not affect the UK being part of the EPO, so protection in the UK through a classical validation of a granted European Patent will still be possible.  However, validating with the new Unitary Patent option would not cover the UK.  Also, whether the Court of First Instance of the UPC agreed to be located in London will still be in London, is a trickier question which cannot be answered at present.

There you have it, the Unified Patent Court (UPC) and the Unitary patent in just 15 minutes.  We are going to have an additional choice in which form we want to obtain patent protection in Europe, i.e. the EPU.  The EU patent package also means, as users of the European patent system, we are already on board a train set in motion toward the UPC.  So all we need to do now is to figure out:

  • whether we want our granted patents to take the classically validated patent train or the Unitary Patent train; and
  • if on the classically validated patent train, whether we might be better off if we get off (“opt-out”) the train before we reach the UPC destination.

This article has been written by Harrison Chang, European Patent Attorney.

For more information on the UPC, please contact Paul Misselbrook (Partner) or Harrison Chang (European Patent Attorney)

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