The new Unitary Patent (UP) is perhaps the biggest change in European patent legislation in recent history. It means huge changes to the way exclusivity can be maintained throughout Europe when enforcing and defending patent rights. Businesses will need to make considered choices about how to best protect and enforce rights as the new regime will sit alongside the existing patent systems.
What is a Unitary Patent?
The Unitary Patent is a pan-European patent obtained through a single registration and validation process at the European Patent Office. Unitary Patents will provide patent protection with unitary effect in every EU country that has chosen to participate in the new system. Therefore, this new type of patent will only apply in those territories that have adopted the Unitary Patent Regulations, and signed and ratified the Unified Patent Court Agreement. The Unitary Patent differs from current European patents (often referred to as ‘classical’ European patents) which are a bundle of separate national patents, effective only in the countries where they have been validated.
What is the Unified Patent Court?
A new court structure is being created to handle disputes over both Unitary Patents and classical European patents. The system will have exclusive jurisdiction over matters concerning the validity or infringement of Unitary Patents. However, businesses may actively choose to ‘opt out’ their classical European patents from litigation before the Unified Patent Court (UPC) for a transitional period of at least seven years. The UPC will have divisions right across Europe, with three central division courts located in London, Paris and Munich.
Patent filing options
The introduction of the new regime means businesses will have the option of:
- National patents in selected European countries
- A ‘classical’ European patent which can be validated in up to 38 countries
- A Unitary Patent which automatically applies in all participating EU countries upon registration
Thus, the new Unitary Patent system will provide businesses with additional choice, with applicants being able to elect between the three registration options, or to mix and match between them, as best fits their business needs.
Choosing a litigation forum
The new Unitary Patent regime will bring implications for the way businesses enforce and defend their patent rights. If a business applies for a Unitary Patent then related disputes will be exclusively dealt with by the UPC.
Any disputes relating to ‘classical’ European patents that have not been opted out from the UPC’s jurisdiction, will also be dealt with by this court. The ‘opt out’ option is available as part of a seven year transition period (at least) that will apply under the new regime.
For those that do opt out, disputes relating to classical European patents will be heard by the relevant national court. Businesses that opt their classical European patents out of the UPC’s jurisdiction will have the option of opting back in provided that no proceedings concerning those patents have been started before the national courts.
National courts will retain exclusive jurisdiction for handling cases concerning national patents regardless of the new court system.
The benefits and risks
Businesses operating in Europe need to ensure that they are prepared for the changes. The new system provides opportunities, but it is complicated and comes with issues which could bring unwanted surprises for those who are not prepared. Potential users of the system need to understand it before the Unified Patent Court is established in order that relevant and strategic choices can be made now.
Businesses must consider whether any granted ‘classical’ European patents should be opted out of the Unified Patent Court’s jurisdiction. If no action is taken, then by default classical European patents will be under the jurisdiction of the Unified Patent Court when it comes into existence and will, therefore, be at risk of central attack via an action brought before the new court.
Status update on the Unitary Patent and Unified Patent Court
It is intended that the EPO will issue the first European Unitary Patent as soon as the Unified Patent Court comes into existence. Provisionally, this is expected to happen in December 2017. In addition, there will be a ‘sunrise’ period which will allow patent proprietors to register early ‘opt outs’ for their classical European patents that they do not wish to subject to the Unified Patent Court’s jurisdiction. This sunrise period is expected to start in early September 2017 to provide for a three month opt out window.
The Impact of Brexit on the UPC
The UK’s decision to leave the EU previously raised questions over the implementation of the Unitary Patent (UP) and the Unified Patent Court (UPC). However, in November 2016, the UK government confirmed that the preparations to ratify the Unified Patent Court agreement were going ahead. Similarly the Preparatory Committee announced that it is working on the assumption that the Agreement on the Unified Patent Court (UPCA) can enter into force allowing the Court to become operational in December 2017
Article 50 of the Lisbon Treaty, which governs the procedure by which the UK will leave the EU, ensures that there will be a minimum of two years of negotiations between the UK government and the EU on the terms of the UK’s departure from the EU. Thus, the UK will not leave the EU until 2019 at the earliest. Until then, the UK will remain a member of the EU. The question of whether the UK could remain a part of the UPC and/or UP after having left the EU is being mooted.
What is a Unitary Patent?
A Unitary Patent is a pan-European patent obtained through a single registration and validation process at the European Patent Office (EPO).
What is the Unified Patent Court?
The Unified Patent Court (UPC) is a new court which will have exclusive jurisdiction concerning enforcement of Unitary Patents and related supplementary protection certificates through a single court action.
When will the Unified Patent Court begin?
It is believed that the Unified Patent Court Agreement (UPCA) will enter into force, so that the Court will become operational, in December 2017. It is expected that a three month ‘sunrise period’ will start in early September 2017 to allow patentees time to opt patents out of the jurisdiction of the UPC if desired.
This timetable is conditional and dependent on multiple factors including the ratification of the UPCA by the UK and Germany, and accession to the Protocol on Provisional Application. If this is not achieved in the expected timeframe it will disrupt the whole timetable, delaying the date upon which the Court will become operational.
What is different about the new system?
Contrary to the current system where the ‘classical’ European patent is a bundle of national patents and only effective in the countries in which it is validated, the Unitary Patent will automatically apply in every participating EU country on registration. Furthermore, classical European patents are today enforced and invalidated in each country separately but under the new system rights will be enforceable across almost all of Europe with just one action before the Unified Patent Court.
Where does it apply?
It will only apply in those countries that adopt both the Unitary Patent Regulations and Unified Patent Court Agreement. Currently, 25 countries are expected to take part.
What are my options?
When the Unitary Patent becomes effective, businesses with allowable patent applications at the European Patent Office (EPO) will have the option of:
- registering a classical European patent which they can then validate in up to 38 EPO member state countries and/or,
- electing to obtain a Unitary Patent which will have automatic application in every participating EU country upon registration.
What does opting out mean?
Opting out refers to the possibility of opting out of the jurisdiction of the Unified Patent Court (UPC). It will not be possible to opt a Unitary Patent out of the competence of the UPC. However, for a transitional period of at least seven years it will be possible to opt out a ‘classical’ European patent. The patentee can opt back into the UPC system as long as no national court proceedings have been launched.
When no formal opt out exists, a classical European patent can be litigated during the transitional period in either the national courts or the UPC. Should national court proceedings occur first, potentially, the patent cannot be litigated in the UPC and the patent has been opted out of the system without the formal process. This may cause problems such as transparency issues or initiating actions against a subsidiary which could then be withdrawn.
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