European patent litigation is currently a very disjointed affair. A European patent application starts its life being centrally examined by the European Patent Office (EPO), but this centralised approach changes after grant when the application becomes a bundle of national patents in a number of chosen validation countries. Whilst there is a 9-month opposition window for centrally opposing a granted European patent at the EPO, any subsequent litigation currently has to occur in the national courts. This means that if you own a European patent and are keen to stop a potential infringer, your only option at present is to take action separately in the relevant validation countries of interest. Equally, if you are concerned about a competitor’s granted European patent, and you have missed the EPO’s 9-month opposition window, your only current option is to start separate invalidity actions in each of the national courts. Clearly, this sort of multi-jurisdictional litigation can be an expensive process, and can lead to different results in different jurisdictions. However, change is coming in the form of the Unified Patent Court (UPC).
The UPC is a new court which will eventually provide a single court for litigation of European patents across the majority of European Union (EU) countries. This represents the single largest change to European patent enforcement in decades.
In tandem with the opening of the UPC, European patent applicants will be given an extra option to consider when choosing validation countries for their European patents. Currently, a granted European patent can be validated in particular countries at the applicant’s choice, and thereafter becomes a bundle of separate patents in those countries. However, alongside the UPC will come the new option of obtaining a so-called “European patent with unitary effect”, which is often more simply referred to as a Unitary Patent. A Unitary Patent will be a single patent right covering multiple EU countries, and will fall under the exclusive jurisdiction of the UPC.
Some common questions about the UPC and Unitary Patents are answered below, but do not hesitate to contact Jo Pelly or your usual advisor at Boult Wade Tennant if you need any further information on the UPC or Unitary Patents.
What is the UPC?
The Unified Patent Court (UPC) will be a patent court common to most EU countries, and will form part of their judicial systems. Eventually, for the relevant EU countries, the UPC will have exclusive competence in respect of all European patents – this will include new Unitary Patents, as well as nationally-validated “bundle” European patents (bundle EPs).
So, if you have European patents or are involved in European patent litigation, the UPC is relevant to you.
When is the UPC coming?
At the time of writing (19 November 2021), two final steps are required before the UPC can become operational. Firstly, one additional country must ratify the PAP-Protocol. This Protocol is secondary legislation relating to a Provisional Application Phase (PAP) of the UPC which will enable last preparations to be made before the UPC opens its doors (e.g. appointing judges and other staff, and finalising the case management IT system). The second required step for the UPC to become operational is that Germany must ratify the UPC Agreement.
Regarding the first step, the UPC Preparatory Committee have indicated that the final ratification of the PAP-Protocol is expected by the end of the year, meaning that the Provisional Application Phase could start very shortly. The Provisional Application Phase has no set duration, but is anticipated to last 6-10 months. On this basis, the earliest that the UPC could become operational is mid-2022. However, UPC timescales have been notoriously difficult to predict in the past, so a start date in late 2022 or early 2023 is perhaps more likely.
Regarding the second step, Germany will ratify the UPC Agreement at some point during the Provisional Application Phase. This ratification will decide the actual start date of the UPC, which will be on the 1st day of the fourth month after Germany ratifies. Therefore, once the final ratification of the PAP-Protocol has occurred, Germany will be very much in control of the UPC timeline.
We will be watching carefully for further developments!
Which countries will fall under the jurisdiction of the UPC?
Any EU country can sign up to the UPC Agreement and, so far, all EU countries except Spain, Poland and Croatia have signed the Agreement. This means that the UPC could potentially have jurisdiction over European patents in 24 EU countries.
However, in order for the UPC to have jurisdiction in a given country, that country also needs to ratify the UPC Agreement. 16 EU countries have ratified the UPC Agreement at the time of writing (23 November 2021), namely Belgium, Bulgaria, Bulgaria, Estonia, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden. Ratification by Germany is necessary for the UPC Agreement to come into force, so this will bring the total number of countries within the jurisdiction of the UPC to at least 17 when the UPC finally comes into force.
How will the UPC affect my European patents and applications?
By default, your existing European patents will fall under the jurisdiction of the UPC as soon as this new court opens its doors. This means that a competitor could start a central revocation action at the UPC against any of your existing European patents, even if they are well past the 9-month EPO opposition window. Whilst such an action would not impact the UK part of your European patent, it could be a very cost-effective way for a competitor to try to revoke your European patent in a lot of EU countries. If you would prefer to avoid the possibility of central revocation of your existing European patents at the UPC, it will be possible to actively opt out your patents from the jurisdiction of the UPC.
Regarding any pending or new European patent applications, these will also fall under the jurisdiction of the UPC on grant. Again, it will be possible to opt out particular applications from the jurisdiction of the UPC if desired.
You will also have new validation options available on allowance of any European patent applications that are pending when the UPC comes into force. It will continue to be possible to elect individual validation countries so as to obtain a bundle of separate patents in those countries (referred to here as a “bundle EP”). However, alongside this, the UPC will provide the new option of obtaining a Unitary Patent, which will cover multiple EU countries and will fall under the exclusive jurisdiction of the UPC. It will also be possible to proceed with a mix of the two approaches, e.g. obtaining a Unitary Patent, as well as validating separately in the UK, Switzerland and Norway. An important point to note is that a Unitary Patent cannot be opted out of the jurisdiction of the UPC.
What is a UPC opt-out?
Opting-out enables a patent owner to actively remove their European patent from the jurisdiction of the UPC so that the European patent instead remains under the jurisdiction of the relevant national courts. Such an opt-out will only be effective for a transitional period of the UPC, which will last at least 7 years. After the transitional period, the UPC will have exclusive competence in respect of all European patents – this will include new Unitary Patents, as well as nationally-validated “bundle” European patents (bundle EPs).
Importantly, only bundle EPs can be opted out of the jurisdiction of the UPC. It is not possible to opt out a Unitary Patent from the jurisdiction of the UPC – Unitary Patents fall under the exclusive jurisdiction of the UPC by definition.
An opt-out is effective for all validation countries in the bundle EP, so it is not possible to opt out only for particular countries in the bundle. However, it is possible for a patent holder to withdraw an opt-out at any time should they wish to do so (unless the European patent has been the subject of national litigation in the meantime). Having withdrawn an opt-out, the bundle EP would then fall within the jurisdiction of the UPC for any subsequent disputes.
Opt-outs will become possible from 3-months prior to the UPC opening its doors. The initial 3-month “sunrise” period is intended to give patent owners time to opt out their patents before competitors are able to start central revocation actions against them at the UPC.
If you are interested in opting out your European patents, please contact Jo Pelly or your usual advisor at Boult Wade Tennant.
Does the UPC affect EPO oppositions?
It is currently possible to oppose a European patent centrally at the European Patent Office (EPO) so long as the opposition is filed within 9 months of the date of grant of the patent. If successful, an EPO opposition can lead to revocation of the European patent in its entirety (i.e. across all validation countries).
Once the UPC becomes operational, it will still be possible to file an EPO opposition if desired. However, for European patents which have not been opted out, the UPC will provide an additional choice of forum for revocation actions. This will be of particular interest in cases where the 9-month EPO opposition window has already passed. However, revocation via the UPC would not affect the European patent in countries outside the coverage of the UPC (e.g. the UK). Furthermore, a revocation action before the UPC is expected to be significantly more expensive than an EPO opposition. Therefore, EPO oppositions will remain immensely valuable tools when looking to invalidate competitor patents.
What is a Unitary Patent?
The term “Unitary Patent” is shorthand for “a European patent with unitary effect”. In other words, a Unitary Patent is a single, unitary patent right which covers multiple EU countries.
As a unitary right, a Unitary Patent may only be assigned or renewed as a whole, and such matters will be managed by the European Patent Office (EPO). This will certainly simplify post-grant administration of European patents, but it will also remove the option for a patent owner to stop paying renewal fees in specific jurisdictions if the patent turns out to be less valuable in those jurisdictions.
How do I get a Unitary Patent?
Once the UPC has become operational, Unitary Patents will become available via the European Patent Office (EPO). Specifically, a Unitary Patent will be obtainable by filing a request for unitary effect at the EPO within one month of grant of a European patent. Therefore, this will be an option for European patent applicants to consider alongside their decisions on European patent validation countries.
The request for unitary effect will not require payment of an official fee at the EPO. However, it will be necessary to file a translation of the European patent. In particular, for English language European patents, a translation into any other official language of the EU will be required. Alternatively, for French or German language European patents, a translation into English will be required. The requirement to submit translations will be reviewed after 6 years, and may be removed depending on the availability of high quality machine translations at that time.
In very limited circumstances, it will not be possible to obtain a Unitary Patent. In particular, a request for unitary effect will be refused when the European patent has not been granted with the same set of claims in all of the countries participating in the Unitary Patent regime. However, such cases are few and far between.
Which countries are covered by a Unitary Patent?
Any EU country can participate in the Unitary Patent regime and, so far, all EU countries except Spain and Croatia are involved. This means that a Unitary Patent could potentially cover 25 EU countries.
However, the territorial scope of a particular Unitary Patent will be defined by the ratification status of the UPC Agreement on the date that the EPO registers that patent for unitary effect. 16 EU countries have ratified the UPC Agreement at the time of writing (23 November 2021), namely Belgium, Bulgaria, Bulgaria, Estonia, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden. Ratification by Germany is necessary for the UPC Agreement to come into force, so this will bring the total number of countries cover by a Unitary Patent to at least 17 when the UPC finally comes into force.
What are the impacts in the UK?
In short, the UK will be unaffected by the new UPC and Unitary Patents.
Since the UK is not part of the EU, the UK will not be one of the countries covered by a Unitary Patent. Nonetheless, it will remain possible to obtain UK patent protection via a European patent application filed at the European Patent Office (EPO). This will simply involve validating a granted European patent in the UK, just as we do now, so business as usual!
In addition, there will be no change in terms of litigation of European patents in the UK. Again, since the UK is not part of the EU, the UK will not fall within the jurisdiction of the UPC. Instead, the UK courts will continue to have jurisdiction over European patents that have been validated in the UK.
The UK is not the only country in this position – there are a number of other EPC Contracting States which are not part of the EU. These are Albania, Switzerland, Iceland, Liechtenstein, Monaco, North Macedonia, Norway, Serbia, San Marino, and Turkey. Therefore, just like for the UK, these countries will not be covered by Unitary Patents, and their national courts will retain jurisdiction over locally-validated European patents.