On 1 June 2024, the European Patent with unitary effect, or Unitary Patent (UP), and the Unified Patent Court (UPC) turned 1. Although still too premature to draw conclusions on the development of either one, the European Patent Office (EPO) has released several statistics that provide some perspective about how the new system has been received by applicants and patentees across different technological areas and jurisdictions. In this series of articles, we provide a quick recap of both the UP and UPC and see where the developments of both stand. We will then provide some areas to consider when devising a strategy for both the UP and the UPC.
Recap of the UP and UPC
While the desire to create a unitary patent has existed at least since the 1970s, it was not until just over 10 years ago that European Union (EU) regulations were put in place to pave the way for what are today the UP and the UPC. Although the drafts for both were issued by 2011, it took approximately another 10 years for the UPC agreement to be ratified by all necessary parties so that both the UP and the UPC were able to finally enter into force last year, on June 1, 2023.
This means that since June 1, 2023, patent proprietors have the option of requesting a European Patent with unitary effect at the EPO within one month of the date of publication of the mention of the grant in the European Patent Bulletin. This is in addition to having the default option of alternatively choosing a classical validation procedure in any of the 39 countries that make up the EPC system, in order to receive national patents in any of these countries. That is, the option that has been available to patentees since the creation of the EPC.
The UP route has the advantage of simplifying the validation process, by turning multiple validation procedures into one. Hence, instead of having to handle multiple validation processes with multiple agents, multiple translations of the granted patent and multiple renewal fees, a single translation is required, in a single centralized process, and with a single renewal payment per year. Not all EU countries that are part of the European Patent Convention (EPC) system have ratified the UP system. Hence, the system will only be attractive to those proprietors having an interest in the countries that are part of the system, these being: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania (as of September 1, 2024), Slovenia and Sweden.
Cyprus, Czech Republic, Greece, Hungary, Ireland and Slovakia have signed the agreement but have not yet ratified it. Other countries, particularly, Spain, Croatia and Poland have not signed up to the agreement, although they have had the option to, and the UK cannot partake after having left the EU.
This means that if proprietors are interested in requesting a UP and also validating in one or more countries that are not (yet) part of the UP system, they will need to separately file individual validations in the additional countries of interest.
In addition to the simplified validation procedure, obtaining a UP comes also with some cost savings, since the UP requires a renewal fee that, during approximately the first 10 years, has a cost equivalent to filing individual validations in four different countries.
But the simplicity and temporary savings have a catch: proprietors pursuing a UP will mandatorily have their UP patents fall under the jurisdiction of the UPC, without the possibility of opting out.
In fact, the UPC has, as of June 1, 2023, exclusive jurisdiction on all the European granted patents if validated in at least one of the countries that have ratified the UPC system. This means that, for the countries that are in the new system, granted patents will be litigated in the UPC. The ones that are validated only in countries that are not part of the new system, will still be litigated in the respective national courts of these countries.
Proprietors that have chosen the classical validation path, independently of whether the validation happened before or after June 1, 2023, will have an option to opt out during a transitional period that may last 7-14 years. During this period, it will also be possible to opt back into the system, after having opted out, one time only.
Litigating at the UPC means that a decision of one single process, in one single court, will be effective in all UPC member countries, and therefore that a patent may be upheld or revoked in these countries by a single procedure.
While the UPC also represents a simplification of all litigious matters for European patents and Unitary Patents, by affording the opportunity of litigating matters in a single process, with decisions being enforceable in all jurisdictions, the risk of revocation of patents in all countries after a single procedure is one that cannot be taken lightly, and must be pondered with care.
Next time, using published statistics from the EPO, we provide some insights into how the systems have been received by different industries and jurisdictions.
