UPC & UP Hub

This hub has been created to provide updates on current developments in the Unified Patent Court (UPC) landscape, and to identify the potential implications for your patent portfolio. To put these implications into perspective, we have prepared an interactive questionnaire below to help you consider how your patent litigation and patent filing strategies may be affected; and to support your approach to the UPC going forward.

Our experts will also be hosting a series of tailored workshops to offer further guidance, support in developing a Unitary Patent (UP) and UPC strategy for your IP portfolio and to answer your questions around these new and complex topics. For further information, download our UPC and UP resources below:

Interactive UPC tool

We understand that every business and every patent portfolio is different, and that the UPC will present different opportunities and raise different issues for each of our clients. With this in mind, we have therefore developed an interactive UPC tool that you can use to start preparing a UPC strategy for your business. Once you have completed the 12 questions below, a radial diagram will be generated, to help visualise your current position within six key aspects to consider when making a decision on UPC participation. We hope that you find this tool informative and helpful for considering some of the main issues that the UPC raises for your patent portfolio, and for identifying opportunities offered by the new UPC system that may benefit your business whilst minimising the risks.

Disclaimer: This tool is not intended to give definitive advice or to be acted upon in isolation. Please contact your usual Mathys & Squire attorney or email us at [email protected] to discuss these results and your UPC strategy in more detail.

Interactive UPC tool
Q1) How many granted EP patents do you hold that are in force?
Q2) How many EP applications in prosecution do you hold?
Q3) How many EP applications do you file per year?
Q4) How many EPC jurisdiction(s) covered by the UPC do you validate/hold patents in?
Do you additionally validate in the UK?
Q5) Do you actively track your competition to understand if their products/services are likely to infringe your patents in Europe?
Q6) How frequently do you negotiate with a competitor in the EU without litigating?
Q7) How frequently do you litigate against a competitor in an EPC jurisdiction covered by the UPC?
Q8) What is the risk of a competitor pursuing litigation (nullity actions) against you in Europe?
Q9) What sector(s) do you predominantly operate in? (please see list of core industries/our practice areas)
Q10) What is the average lifespan of your EP patent validations?
Q11) Do you actively manage and/or selectively renew your EP patent family over the lifetime of your patents?
Q12) Is your EP intellectual property portfolio likely to be assigned or licensed?
Axis definition:

1) Invalidation risk – It measures how high the risk of your portfolio being invalidated is.

2) Annuity cost saving – The UPC provides the opportunity to renew a patent with unitary effect in a centralised manner. This means that only one renewal fee must be paid per year generating the unitary effect for all member states. This single renewal fee will be significantly lower than the overall amount of all renewal fees of all member states in combination. Therefore, the UP will provide cheaper annuities in relation to the provided territorial scope.

3) Geographic portfolio management – A UP is a single unified patent right. It is therefore not possible to reduce annuity costs during the lifetime of the patent by selectively renewing the patent only in certain countries. It is also not possible to assign a unified patent to different entities for different countries. Therefore, while a UP can simplify management of a European portfolio, it can restrict options for active per-territory management over the lifetime of a patent.

4) Territorial scope – The UP provides an opportunity to cover multiple countries with a single patent. This is in contrast to the current EP system where a patent granted by the EPO must be ‘validated’ on a country-by-country basis. If you are interested in patent coverage in many European countries, a UP potentially offers protection over a similar or wider range of countries with a simplified validation procedure and reduced renewal costs compared to the current system.

5) Centralised litigation opportunity – The UPC provides the opportunity to litigate a patent infringement within one single case across all UPC member states. Compared to the present system with its separate national litigation, this reduces the complexity and costs significantly for a patent holder. Additionally, the risk for an alleged infringer resulting from this single litigation is increased which may provide a stronger negotiation position for the patentee.

6) Geographic licence and assignment management – UPs cannot be assigned to different legal entities in different countries, so if this is part of your likely patent strategy, then a UP may not be for you. Moreover, while a UP can be licensed on a per-country basis, licensing of a single patent right in this way is likely to be more complex and it may be beneficial simply to validate the patent in individual territories to allow simpler licensing of the individual rights.

If you would like to receive a copy of your results, with an interpretation of each of your axes’ scores and their implications for your portfolio via email, please fill in your contact details below.

Following many years of work, the official start of the Unified Patent Court (UPC) and a Unitary Patent is anticipated around late 2022 or early 2023. Once in force, the new system will undoubtedly change patent litigation across Europe forever.

Catch up on everything that has happened so far by visiting our UPC articles archive.

FAQs

What is the Unitary Patent?

When it comes into effect, the Unitary Patent (UP) will be a patent that will have effect and will be enforceable across Europe. Although some European countries are not yet participating, the UP will become an alternative to the existing standard European Patent (EP) for many countries and it might be of strategic benefit to own UPs, as well as EPs, which can cover jurisdictions outside of the UP territory.

At present, there are at least 16 countries that have ratified the corresponding UPC agreement, pointing to the fact that these countries will be part of the system from the start, with more countries joining all the time.

You will find guidance and useful information around what to consider for your own strategic approach to the UP system in the UP brochure below.

What is the difference between a Unitary Patent and a European Patent?

A traditional EP takes effect in those countries where it is validated after grant. Each of those individual patent rights must then be renewed annually in each of the countries of validation and enforced at the national level, making it a costly overall endeavour. A UP on the other hand takes effect in all participating members states without the need for national validation, meaning there is only one renewal fee to be paid for coverage across the member countries.

However, in the same way that patent protection applies to all of the UP countries, any invalidation action may result in the patent being revoked in all of those countries too.

For more information on what may happen after you have chosen unitary effect for your patents, please refer to our UPC brochure below.  

What is the cost of the Unitary Patent?

The UP renewal fees will be equivalent to the renewal fees of the top four countries where EPs were most often validated. This means that if you validate in more than four UPC member countries, you can expect the UP to be more cost-effective than having to pay renewals for each validation of your classic EPs. This is one of many factors to consider when deciding whether to select a UP or not.

For an overview of factors you should consider with regard to UP protection, please refer to our UP brochure.

What is the Unified Patent Court?

The UPC is a new pan-European patent court that will have exclusive jurisdiction over patents granted by the European Patent Office (EPO) for UPC countries, including infringement and validity actions. This will apply to all previously granted and newly granted EPs. All UPs will fall under this exclusive jurisdiction and this will also eventually apply to all classically validated EPs. There is, however, a transitional period of at least seven years within which it will be possible to ‘opt out’ classically validated EPs from the jurisdiction of the UPC.

For more information on the opt-out option, please refer to our UPC brochure.

When will the Unified Patent Court officially come into existence?

It is currently expected to come into force in late 2022 or early 2023, however, the precise date is not yet known.

Will I be able to obtain patent protection in countries not participating in the Unitary Patent system?

Some countries are not yet participating in the UP system, including Ireland, Hungary, Romania, Croatia and Spain. Non-EU member states cannot participate in the UP system so the UP will not extend to Iceland, Norway, Switzerland, Turkey and, of course, the United Kingdom which has withdrawn from the UP system due to Brexit.

However, you will be able to obtain patent protection in these countries by validating your patent as a classic EP separately in the countries above.

What does the introduction of UPC and UP mean for all of my current European Patents?

A request for UP protection must be filed within one month of the date of grant. This means that all EPs granted more than one month before the UP system comes into force will not be eligible for unitary protection but will remain classic EPs.

However, with respect to the jurisdiction of the UPC, you can decide within a transitional period of at least seven years to opt out your classic EPs. Should you choose to opt out, national courts will retain competence for your patents. Such decision can and should of course be taken on a case by case basis, i.e. you may choose to opt out some of your EPs, while deciding that others should fall under the competence of the UPC by not opting them out.

For guidance on which part of your EP portfolio should fall under the UPC’s competence and which might be better served by opting out, please refer to our UPC brochure.

In addition, our UPC consulting team is happy to assist you with your portfolio review and the strategic decisions to be made.

What is an opt-out?

An opt-out is the option to withdraw your current EPs from the jurisdiction of the UPC. Although the UPC will eventually have exclusive competence in respect of all EPs in UPC countries, it will be possible to opt out of the system during the transitional seven year period (which may be extended to 14 years). An opt-out can be registered for any patent granted or applied for within said transitional period. 

Once opted out, the patent or application will be subject only to the jurisdiction of the national courts and not to the UPC. The opt-out lasts for the lifetime of the patent unless withdrawn by the patentee. If you do not opt out, the EP will fall automatically into the UPC system.

Please note that there are many factors to be taken into consideration when deciding whether to opt out.  While we have listed these considerations in questions below, we have also summarised them in the opt-out brochure below.

Some of the factors may apply to your portfolio more than others; some may not be relevant to you at all. Each patent proprietor’s situation is unique and these considerations can easily turn into a complex analysis based on your individual situation, the complexity of your portfolio and overall market situation. Our dedicated UPC team is happy to assist in all UP and UPC related matters.

Why might I want to opt out my patent?

Factors that point towards opting out from the UPC system include:

  • This is a key patent protecting an important product and is therefore likely to be asserted or have its validity challenged.
  • The patent is fundamental to a particular technology area.
  • The patent has been monetised (e.g. there are licences or liens against the patent or it is relied upon for investment) and so is of key importance to your business.
  • You are aware or suspect that the patent is vulnerable to a validity attack.
  • The patent, or closely related patents, have been opposed at the EPO.
  • Litigation is common in your industry or technical area.
  • You have concerns about the quality or consistency of decisions in the new court.
  • You wish to make it harder for competitors to clear the way to enable launch of their product across the whole of Europe.
  • Enforcement in one jurisdiction would have the same commercial effect as a pan-European enforcement.

Why might I want to allow my patent to remain opted in?

Some of the key reasons you might want to allow your patent to remain opted in to the UPC system include:

  • You are aware of one or more potential infringers in multiple territories across Europe against whom you may wish to bring an infringement action.
  • You wish to provide a bigger disincentive to infringers who will be aware of the possibility of pan-European action, including injunctions and damages.
  • The patent is considered to be strong, with few concerns over validity, in particular if the patent has survived an opposition at the EPO.
  • The invention covered by the patent is not currently implemented in a product and hence is unlikely to be asserted or have its validity challenged; or the patent is one of a portfolio of patents of roughly equal value to your business.
  • There is a low risk of invalidity actions against the patent due to invalidity actions being uncommon in your field or within the group of competitors.
  • To prevent competitors from blocking you opting in by launching a national court action against the patent.
  • To access cheaper litigation options: Pan-European litigation in a single UPC action will be cheaper than litigating in multiple separate European countries. This may be particularly important for patents protecting low value products.
  • The patent is directed to a process invention. Unlike some European countries, the UPC has a discovery process, and therefore may be particularly suitable for litigating process patents. Moreover, the UPC might be able to grant relief if the individual process steps are conducted in different European countries.
  • You wish to try out the new court and influence its development, for example by helping to frame its precedents and procedures.

I am a UK based patent holder. How does this affect me? Will the UK be part of the Unified Patent Court and Unitary Patents system post-Brexit?

As the UK is no longer part of the European Union, the UK will not be part of either of these systems.

This means that patentees will be able to obtain national UK patents through the EPO as they always have done, alongside their UPs or classically validated EPs.

Due to our established presence in the UK and the EU, as well as our unique combination of competencies across our widely qualified patent attorneys in collaboration with our in-house Mathys & Squire Consulting team, we are well placed and fully prepared to advise and support you in carving out your strategy, as well as providing support for any litigation nationally and before the UPC.

Latest Mathys & Squire UPC news

Unified Patent Court confirms panel of 85 judges is now in place

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The Unified Patent Court – Europe’s new single point of contact for patent enforcement – took a major step forward with the confirmation that 85 of its judges from across the EU have now accepted positions on the court. After years of delay, the Unified Patent Court is now fast approaching and patent holders worldwide cannot afford to ignore it.

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Click here to read more

The Unitary Patent: Possible options ahead of the EPO’s transitional measures

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Although the Unified Patent Court (UPC) is anticipated to open its doors around March 2023 and European patent holders and applicants are busy reviewing their European patent portfolios to decide whether to opt out of its jurisdiction, the ability to formally select Unitary Patent protection is not yet available.

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Unified Patent Court begins to appoint judges in major step forward for single IP enforcement system

Europe’s new one-stop shop for IP enforcement – the Unified Patent Court – took a major step forward on Friday 8 July 2022, as 90 new judges began to be informed that their applications to sit on the court have been successful.

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How can Mathys & Squire assist you?

With the advent of the UP and the UPC, there are many factors to be taken into consideration by anyone holding a European Patent. Some of them may apply to you more than others, some may not be relevant to you at all. We have attempted to provide you with a comprehensive overview via this Mathys & Squire UPC Hub, however – whilst comprehensive – this overview is not conclusive. Each patent proprietor’s situation is unique and the various considerations can easily turn into a challenging endeavour based on your individual situation, the complexity of your portfolio, overall market situation and many other factors.

Irrespective of where you are based and what considerations might apply to your situation, we are uniquely placed to assist you in any and all matters regarding the UP and UPC. This is thanks to our established presence and ranking in the UK as well as the EU, along with our combination of competencies across our widely qualified patent attorneys in collaboration with our in-house Mathys & Squire Consulting team.

We have put the required preparatory work in and have developed an in-depth understanding of the impact of the UP system and UPC on our clients. Thus, we are fully prepared to advise and support you in carving out your individual strategy, as well as – if necessary – litigate, both nationally and before the UPC.

In addition to this, a core group of our patent attorneys and consulting team have come together to form a highly specialised UPC team, offering tailored workshops from early 2022 to put you in the best position to tackle your future strategy and approach.

Our team of patent attorneys is based in offices across the UK, plus Germany, France and Luxembourg, with decades of experience in patent litigation.

Contact Mathys & Squire today for more information on how our attorneys can assist you.

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