In recent years, significant strides towards a new system establishing a Unitary Patent (UP) providing EU-wide patent coverage and a Unified Patent Court (UPC) to enforce such patents have been made. However, an unresolved legal challenge in Germany and the confirmation that the UK will not be participating in the system following their departure from the EU have raised doubts about whether the new system will come into effect.
The Preparatory Committee issued a statement on 5 March 2020 confirming that they are continuing to work on the implementation of the UP/UPC system and will address the practical implications of the UK’s departure once the legal challenge in Germany has been resolved. If the UP/UPC system is implemented at a later date, all applicants, including those based in the UK, will be able to use the system to obtain protection in EU countries. The European patent attorneys at Appleyard Lees will also be able to represent all clients who use the UP/UPC system.
Regardless of the fate of the UP/UPC project, the UK continues to be a member of the European patent system through the European patent office (EPO) and applications to the EPO continue to cover the UK. Appleyard Lees’ European patent attorneys will continue to act for clients before the EPO.
After grant a European patent must currently be validated in each of the member states for which protection is desired. This gives a ‘bundle’ of national patent rights which are then dealt with separately under the national laws of each country. This is often termed “classical validation”.
Once the Unitary Patent system is in force, a patentee will have two options at grant for the countries (such as Germany, France, Italy) which are within the Unitary Patent:
For countries (such as UK, Norway, Turkey) which are party to the European patent convention but cannot be covered by the Unitary Patent, a patentee must follow the classical validation route if protection in these countries is of interest.
Factors to consider when deciding on the most appropriate route include simplicity, initial and future costs, flexibility and opt outs.
The newly created Unified Patent Court will make revocation and infringement decisions which are binding in all member states. Not unsurprisingly, future granted Unitary Patents will fall under the jurisdiction of the UPC. However, the system has also been set up to allow the UPC to be used for European Patents which do not have unitary effect, including those granted before the UPC was created.
During a transition period of at least seven years, owners of granted European patents and pending European applications will be able to opt out of the jurisdiction of the Unified Patent Court (UPC). There will be a sunrise period of three months before the regime comes into force to allow existing European patents to be opted out with effect from the date of commencement. Some factors to consider when deciding whether or not to opt out include uncertainty, a central revocation risk, flexibility and timing.
The original plan was for the UPC to have central divisions in London, Munich and Paris. This is one of the implementation details which will need to be changed as a result of the UK’s departure from the EU. We will provide more information as soon as it is available.
The fate of the UP/UPC is uncertain but it is still advisable to decide, broadly, whether to use the UP/UPC system or to avoid it. Brief comments are set out below and for more information contact Julia Gwilt.