Opportunities, not obstacles

The Unified Patent Court (UPC) is a common patent court for most EU countries. 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.

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. 17 EU countries have ratified the UPC Agreement so far, namely Belgium, Bulgaria, Denmark, Estonia, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden.

By default, your existing European patents fall under the jurisdiction of the UPC. 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 many EU countries. If you would prefer to avoid the possibility of central revocation of your existing European patents at the UPC you will need to actively opt out your patents from the jurisdiction of the UPC. Any pending or new European patent applications, will also fall under the jurisdiction of the UPC. Again, it is possible to opt out applications from the jurisdiction of the UPC if desired. You also have new validation options available on allowance of any European patent applications. It continues 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, there is the new option of obtaining a Unitary Patent, which covers multiple EU countries and falls under the exclusive jurisdiction of the UPC. It is also possible to proceed with a mix of the two approaches, e.g. obtaining a Unitary Patent, as well as validating separately in countries not covered by the UPC, e.g. 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.

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. It will only be possible to opt out during a transitional period of the UPC, which will last at least 7 years. However, such opt-outs will usually be effective for the whole life of the patent. 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 states for which the bundle EP was granted, so it is not possible to opt out only for 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.

It is 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). The UPC does not alter this and it is still possible to file an EPO opposition. However, for European patents which have not been opted out, the UPC provides 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 will 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 remain immensely valuable tools when looking to invalidate competitor patents.

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 respect of specific EU countries if the patent turns out to be less valuable in those jurisdictions.

A Unitary Patent is 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. Boult are able to file requests for Unitary Patents as part of our comprehensive European services. Although the UK is outside of the EU, UK based European patent attorneys (as well as our German based European patent attorneys) have rights of representation allowing us to act before the EPO in obtaining Unitary Patents. The request for unitary effect does not require payment of an official fee at the EPO. However, it will be necessary to file a translation of the European patent. 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. 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 likely to be few and far between.

Any EU country can participate in the Unitary Patent regime and, so far, all EU countries except Spain and Croatia have indicated that they will be 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. 17 EU countries have ratified the UPC Agreement so far, namely Belgium, Bulgaria, Denmark, Estonia, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, and Sweden.

In short, the UK will be generally unaffected by the new UPC and Unitary Patents. Since the UK is not part of the EU, the UK is not one of the countries covered by a Unitary Patent. Nonetheless, it remains possible to obtain UK patent protection via a European patent application filed at the European Patent Office (EPO). This simply involves 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. 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 several 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.