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 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.
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.
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.
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.
It is currently expected to come into force in late 2022 or early 2023, however, the precise date is not yet known.
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.
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.
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.
Factors that point towards opting out from the UPC system 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 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.
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.
Click here to read more
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.
After years of seemingly little to no progress and challenging negotiations, and with the Unitary Patent (UP) being on the verge of introduction several times, the time has finally come. Despite many hurdles, unforeseen detours, and some political headwind, the way now seems clear for the UP. After a range of further national ratifications, the final required national decision is now awaited for 2 December 2021 with the ratification of the UPC being on the agenda of the Austrian Federal Council.
Following delays throughout 2020 (see previous article here), on Friday 9 July 2021, the Federal Constitutional Court ruled on two urgent applications against the ratification of the Unified Patent Court (UPC). In both cases (2 BvR 2216/20 and 2 BvR 2217/20), the petitions were rejected as inadmissible, as – in the court’s view – there was insufficient substantiation.
The UPC system provides a new International court that is “common to the member states” but lies largely outside the jurisdiction and control of the UK and EU court systems. The court system was designed while the UK was within the EU but, due to opposition for the project from Spain and Italy, the court was never an EU-led creation. Instead, the UPC will be a largely independent International court straddling the EU and UK jurisdictions.
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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