- The unified patent court agreement (UPCA) which institutes a Unified Patent Court (UPC) and an EP Unitary Patent (UP) operates to provide uniform legal and administrative procedures for European patents and applications and will formally enter into effect on 1-JUN-2023 (effective date), for states (UPCA states) that have ratified the UPCA. To date 17 of the 25 participating EU states that have signed on to the UPCA have ratified the UPCA and are UPCA states. EP “Classic Patents” of the type granted in the past with which we are familiar, and traditional procedures for administering EP Classic Patents and adjudicating disputes involving EP Classic Patents in EU national courts will be maintained and be available as selectable options for a Transitional Period of at least 7 years from the effective date.
- From filing to grant, prosecution of an EP patent application has not changed – it’s the same whether the application is intended to be an EP Unitary Patent or an EP Classic Patent. The UPCA addresses what happens after grant.
- UPCA relevant rules: depending on the grant date a proprietor of an EP granted patent may be able to select whether or not the granted patent becomes an EP unitary patent.
- A unitary patent may be requested for UPCA states for any European patent granted on or after the effective date. For such a granted European patent to become an EP Unitary Patent the proprietor of the European patent must file a request for a “unitary effect” for the European patent no later than one month after mention of the grant of the European patent is published in the European Patent Bulletin.
- If a request for unitary effect is not made for a granted European patent the granted patent may be validated in any EPO member state as an EP Classic Patent, independent of the status of the state with respect to the UPCA.
- It is not possible to obtain an EP Unitary Patent for UPCA states, and in addition, an individual EP Classic Patent for an EU state that has signed on to the UPCA program but has not as yet ratified the UPCA. (NOTE: a UPCA that has signed on to the UPCA program is referred to as a UPCA participating state independent of ratification status).
- EP Unitary Patents are not available for EPO member states that are not EU states – but EP Classic Patents are and will continue to be available.
- An EP Unitary Patent for a granted EP application is not available for a UPCA participating state that has not as yet ratified the UPCA if the granted EP application is intended to become an EP Unitary Patent.
- A European patent granted before the effective date cannot become an EP Unitary Patent.
- The UPCA provides an EP Unitary Patent with legal and administrative benefits:
- A single court, the Unitary Patent Court (UPC), with jurisdiction over EP Unitary Patents (as well as EP Classic Patents that are not opted-out of the UPC, see ¶5 & ¶6 below). As of the effective date, settlement of disputes involving an EP unitary patent (& non opted-out EP Classic Patents) will be handled by the UPC and a decision by the UPC with respect to the disputes will be binding on all UPCA states. For example a question regarding infringement or validity of an EP unitary patent, irrespective of the state for which the question of validity or infringement arose, will be decided by the UPC and the decision will be binding on all UPC states.
- Unified administrative procedures for EP Unitary Patents that includes a single “unitary” validation fee for an EP Unitary Patent that covers all (currently 17) UPCA states and a single unitary annual renewal fee that covers renewals for all UPCA states. Unitary validation and annuity fees are set at less than the respective national validation and annuity fees for about 4 EP states.
- For an EP Classic Patent the unified administrative procedures do not apply, but EP patents, whether classic or unitary, are by default subject to the UPC.
- The UPCA provides an opt-out option for removing EP Classic Patents from UPC jurisdiction and providing for settlement of disputes regarding an EP Classic Patent in national courts. A proprietor of an EP Classic Patent can opt-out the patent during a Sunrise Period that extends from
01-MAR-2023 to 01JUN-2023. Thereafter the opt-out option is available during the transitional period if no action regarding the EP Classic patent has been brought before the UPC. It is possible to withdraw an opt-out, and subsequently opt-in, but once in again, an opt-out is not available.
- It is not possible to opt-out a Unitary Patent from UPC competence.
WHAT TO CONSIDER
1) The UPC is a new court that does not have any pre-existing case law or track record and will have a new cohort of intellectual property judges. How the court will judge on various patent issue is uncertain.
2) For an EP Unitary Patent a negative decision in a patent dispute automatically applies to all UPCA states – you lose in one, you lose in all – for an EP Classic Patent it doesn’t – you lose in one, you lose in one.
3) For validating an EP patent in a number of UPCA states substantially greater than four, an EP Unitary Patent may provide significant savings in costs and management resources.
4) It may be wise to hedge your bets and go the classical route for important patents.
5) WHEN IN DOUBT CALL OUR OFFICE to discuss your options in more detail – firstname.lastname@example.org (+972-3-6488630).