Introduction
The European Patent Convention currently allows an applicant to seek patent protection in the 38 EPC Member States via a single European patent application which, once granted, can be validated in any or all of those countries. At that point, the European patent becomes a “bundle” of national patents in the validated countries. This part of the process alone can be costly and sometimes complex, because each member state has its own requirements in relation to translations of claims and/or the patent specification.
It also means that if there is infringement of the patent in multiple of those countries, the patent owner must take legal action in each of the national courts in question. Equally, if a third party wants to challenge the validity of a European patent after the initial 9-month opposition period, they must do so via individual actions in each of the member states in which it has been validated. Both of these courses of action represent a huge cost to all parties involved but, not only that, inconsistencies between the way in which the authorities in each member state interpret the various patent provisions can lead to varying outcomes and associated uncertainty.
But all that looks set for a shake-up in the biggest change to European patent law in 40-odd years, and the Unitary Patent and the UPC now look set to become a reality later this year or early next year, but what does this mean in real terms?
What?
After many years of delay and uncertainty, the UPC now looks likely to be operational later this year or early next year, and is intended to provide a central forum for challenging and enforcing patents in UPC Member States*. However, the UPC will not have jurisdiction over European patents in non-UPC Member States or any direct national patents filed in any country in the EU, whether a UPC Member State or not.
With the Unified Patent Court (UPC) comes the possibility of a Unified Patent (UP), and the UPC will have sole jurisdiction over actions related to a granted UP. So, instead of the “bundle” of national patents resulting from a European patent, a UP will be a single granted patent that is valid across all of the UPC Member States.
At the start date of the UPC, all pending European patent applications will automatically transition into the UPC, as will granted European patents (to the extent that they are validated in the UPC Member States) unless they are opted out.
When?
Owners of granted European patents (validated in the UPC Member States) and pending patent applications can opt out of transitioning into the UP/UPC during a so-called “Sunrise Period”, which will start 3 months before the start date of the UPC (which is not yet set, but could be any time from September 2022 onward, depending on when Germany ratifies the agreement).
For patent owners that do not opt out during the Sunrise Period, it will still be possible to opt out of the UPC for at least 7 years following the start of the UPC if, and only if, a third party has not filed a challenge to the patent (at the UPC) before the opt-out application has been successfully registered. There is likely to be a delay (certainly weeks, if not more) between filing an opt-out application and it being successfully registered, during which such a challenge could be lodged at the UPC, which would cause the opt-out to be reversed. Therefore, European patent owners definitely wishing to opt out of the UPC would be wise to do so during the Sunrise Period to ensure that it is registered in time.
Why?
There are many different reasons why you might decide to opt out of, or remain opted into, the UPC when the time comes, but they all ultimately boil down to the answers to two main questions:
- How likely is it that you will want to enforce the patent across multiple UPC Member States against a possible infringer? Remaining in the UPC would enable you to do so via a single court action, the decision of which would take effect in all of the UPC Member States;
And
- How likely is it that the validity of the patent will be challenged by a third party? Opting out of the UPC would the risk of revocation via a single action that would take effect across all of the UPC Member States.
For example, if the patent is particularly important to your business because it protects an important product and/or it is being licensed, or if you believe the patent might be vulnerable to a validity challenge, then you may want to consider opting out.
However, if you don’t have any validity concerns, and it is likely that you will want to be able to enforce the patent across multiple jurisdictions against a potential infringer, then remaining opted into the UPC would enable you to conduct a single court action via the UPC, which is likely to be significantly cheaper than multiple court actions in multiple national courts.
Of course, the answers to these questions may be rather more complex, and there is certainly no ‘one size fits all’ option. In fact, you may even decide to adopt a different strategy for different patents or product portfolios, depending on the specific circumstances.
How?
There is no official fee for opting out, but there will be a formal opt-out application, that will then be examined to ensure that it meets the formal requirements before it is officially registered.
Who?
An opt-out application must be filed on behalf of the true proprietor of the patent. Therefore, if ownership of the patent has changed from what is shown on the European and/or national patent registers, we will need to ensure that the correct entity makes the request and that the official records are properly updated.
The Future
In order to obtain a UP, an applicant will still need to file a European patent application, designating the UP, as well as any of the other EPC Member States that are not participating in the UPC. After grant, if the European patent specification is in English, it will only need to be translated into one other official language of the EU to ‘validate’ the UP, and only a single annual renewal fee will need to be paid to maintain the UP across all UPC Member States that had ratified the UPC agreement as of the date of filing the European patent application. It is important to note that a European patent validated as a UP cannot subsequently be opted out of the UPC.
BUT
It is worth noting here that, as of 1st March 2022, the UPC Member States only represent 17 of the 38 EPC Member States, so if protection is required in any of those countries not participating in the UPC (notably, Spain, Poland, UK, Switzerland, Turkey, Norway and any other non-EU countries), then the European patent will also need to be validated in those countries, as before, and individual annual renewal fees paid to maintain the patent in each country.
*As of 1st March 2022, the countries that have ratified, or will ratify, the UPC agreement before the start date of the UPC are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
Any other questions?
If you have any questions about this, or any other IP matter, please do book a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visit our website at https://strachanip.co.uk/contact/
