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:
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.
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.
Following many years of work, the Unified Patent Court (UPC) and Unitary Patent will come into existence on 1 June 2023. The sunrise period has now begun, allowing early registration of opt-outs for existing patents and patent applications.
Catch up on everything that has happened so far by visiting our UPC articles archive.
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.
Unitary Patents will initially provide patent protection in 17 countries. More countries might join the system in future, meaning that Unitary Patents granted in the future will provide correspondingly greater coverage.
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.
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 member 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.
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.
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.
The start date for the Unified Patent Court will be 1 June 2023. This will also be the date on which the Unitary Patent system comes into effect. The “sunrise period”, allowing early registration of opt-outs before the UPC comes into existence has now begun.
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.
Any existing EPs which have already been validated as “classic” EPs will remain as such and cannot be converted into Unitary Patents.
Currently-pending EPs, including EPs which have received a notification of intention to grant but which have not yet been formally granted, may be eligible for validation either as a Unitary Patent or as a classic EP. A request for validation as a UP must be filed within one month of the date of grant. This means that EPs granted more than one month before the UP system comes into force, i.e. EPs granted earlier than 1 May 2023, will not be eligible for unitary protection. However, if you have received a notification of intention to grant from the EPO and you have not yet approved the text intended for grant, you may be able to delay grant until after this date in order to make the patent eligible for unitary effect. For more information on delaying grant, please contact us.
Classic EPs, including those granted before the new system enters into force, will fall under the jurisdiction of the UPC by default. 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.
An opt-out is a request to withdraw an EP from the jurisdiction of the UPC. Although the UPC will eventually have exclusive competence in respect of all EPs in UPC countries, it is possible to opt out of the system during a transitional seven year period, which will run from 1 June 2023 until 1 June 2030. This may be extended to 14 years, i.e. to 1 June 2037. During this time, opt-outs can be registered for classic EPs and for pending European patent applications. A “sunrise period” also allows opt-outs to be registered now, in advance of the formal start of the transitional period. However, patents which have been validated as UPs cannot be opted out.
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.
Factors that could point towards opting out from the UPC system might include:
Some of the key reasons you might want to allow your patent to remain opted in to the UPC system include:
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 a UP will not provide patent protection in the UK, and the UPC will not have direct jurisdiction over patents validated in the UK.
However, this does not have any effect on the UK’s membership of the European Patent Convention and EPO. Patentees will still be able to obtain patent protection in the UK through the EPO as they always have done.
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.
SPCs which come into effect after the UPC Agreement comes into force will fall under the UPC’s jurisdiction as long as they are based on Unitary Patents or European Patents which have not been opted out. At present it is unclear whether SPCs will also fall under the UPC’s jurisdiction if they are based on European Patents which expired before the UPCA comes into force (which would be the case for any SPC already in effect when the UPCA comes into force). SPC holders who are averse to the prospect of centralised revocation through the UPC may wish to take a precautionary approach and attempt to lodge opt-outs in respect of the patents underlying such SPCs in order to opt the SPCs out of the UPC’s jurisdiction.
Germany has finalised its approval of the Unified Patent Court (UPC), opening the UPC’s case management system and kicking off the court’s sunrise period from 1 March. The start date for the UPC is now 1 June 2023.
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Under the new laws of the Unified Patent Court, a company facing a patent infringement claim will have as little as two months to prepare their defence. Such a short period of time may be too little for a company to build a proper, robust defence in a complex case. ‘Patent trolls’ are expected to deliberately refrain from notifying the alleged patent infringer of the pending litigation until the very last minute, leaving them at a considerable disadvantage.
The Unified Patent Court (UPC) – which is expected to launch in April 2023 – will have jurisdiction not only for patent litigation, but also for litigation involving supplementary protection certificates (SPCs) issued for medicinal products and plant protection products. The types of patents for which the UPC will have jurisdiction are well-defined, but analysis by Mathys & Squire’s SPC team has identified some areas of uncertainty when it comes to SPCs.
The unitary effect and the Unified Patent Court (UPC) system comes with a wider aspect as to validity against national prior rights (national applications with an earlier priority date but a publication after the priority date of the European patent (EP)).
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.
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.
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.
The final version of the Rules on Representation before the UPC has now been published, and we are pleased to confirm that all our UK, French and German attorneys will be able to represent our clients before the new UPC when it is up and running.
In preparation of the entry into force of the Unitary Patent system, the European Patent Office has announced two transitional measures to enable early uptake of the Unitary Patent effect for interested applicants.
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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