After many years of “will they or won’t they?”, much negotiation and a Brexit disruption, the Unitary Patent is finally, almost, here.
What is the Unitary Patent?
Generally, the UP will be a European patent, granted by the European Patent Office (EPO), that will have unitary effect across all participating UP Member States of the European Union (EU) that have signed the Unified Patent Court Agreement (UPCA).
When the UPCA comes into force, all already granted European patents will automatically fall under the jurisdiction of the UPC in UP Member States, unless the patentee opts out of the UP system.
Therefore, all patentees will have a choice of two options for each European patent:
1. Opt out of the UPC; or
2. Remain in the UPC by taking no action.
Which Countries are in the Unitary Patent System?
Currently there are 17 European Union countries (including France and Germany) signed up for the UP when it commences on 1 June 2023. (See Table 1 below).
| 1. Austria | 5. Estonia | 9. Italy | 13. Malta | 17. Sweden |
| 2. Belgium | 6. Finland | 10. Latvia | 14. Netherlands | |
| 3. Bulgaria | 7. France | 11. Lithuania | 15. Portugal | |
| 4. Denmark | 8. Germany | 12. Luxembourg | 16. Slovenia |
Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia have all signed up to the UP system but have chosen not to utilise the system at commencement. It is expected these countries will join in the future.
Both Spain and Poland have opted not to join the UP system and therefore registration in those countries will only be available through a direct national filing or validation from a European patent.
Other countries who are Member States of the European Patent Convention (EPC), but who are not in the EU (for example, the United Kingdom, Switzerland and Norway) are not able to join the UP system. Registration in those countries will only be available through a direct national filing or validation from a European patent.
What Happens if you Opt Out of the UP
If you choose to opt out, your European patent will remain valid in those countries elected during the validation phase of your European patent and will not have the benefit of central enforcement through the UPC.
However, your European patent will not be open to a single revocation action through the UPC. That will mean that if a 3rd party seeks to revoke your European patent in a particular European country that it is validated in, and is successful, then revocation in that country will not cause revocation in other European countries in which it is validated.
In our opinion, if you are intending to opt-out, we believe it would be best to do so during the 3 months sunrise period that commenced 1 March 2023. Otherwise, competitors may initiate a revocation action before the UPC immediately after the expiration of the sunrise period which would prevent opting out of the attacked patent. Some fees will be incurred for opting out of the UPC but these should be minimal.
The opt out can be reversed at any time but it is not possible to opt out a second time.
What Happens if you do not Opt Out of the UP
If you choose not to opt out, your European patent will automatically fall under the jurisdiction of the UPC. Your European patent will remain registered in those countries, and only those countries, your European patent is currently validated in and will have the benefit of central enforcement through the UPC. That is, you can enforce your patent in multiple jurisdictions through the Unified Patent Court where patent infringement has been identified in multiple countries.
However, your European patent will also be open to a single revocation action through the UPC so that if the UPC decides to revoke the patent then it will be revoked in all UPC countries your European patent is registered in.
It is important to be aware that if you choose not to opt out, your European patent will only be registered in the Member States in which your European patent is currently enforceable. Your European patent does not become enforceable in more countries than your European patent is currently enforceable in by choosing not to opt out of the UPC. As an example, if your European patent is currently registered in 2 of the 17 UP Member States (e.g., France and Germany), and you subsequently choose not to opt out of the UPC, your European patent will only be enforceable and revocable in the 6 UP Member States originally elected. You do not gain registration in all 17 Member States of the UP by not electing to opt out of the UPC.
What Happens Next?
As explained above, when the UPCA comes into force, all European patents will automatically fall under its jurisdiction in UP Member States, unless the patentee opts out of the UP system.
Opting out of the UPC will only be possible in the first seven (7) years (this may be extended up to 14 years by the EPO) from when the UPCA comes into force. The opt out can be reversed but it is not possible to opt out a second time.
Regardless of whether you choose to opt out or not, renewal fees will continue to be paid to the national office of each Member State in which the European patent was validated and you can selectively abandon protection in individual countries that are no longer commercially important to you as the patent ages.
What If I Have a Pending European patent application?
For applications that are currently pending or filed in the future, it will be necessary to decide for each application whether you wish to have a unitary patent or not. In contrast to European patents granted before the commencement of the UP system, patents granted after the commencement of the UP system will be administrated on an opt-in basis. The application for what is known as “unitary effect” must be made by explicit written request within one month of grant of the European patent.
The typical validation route for all EPO member States, including those non-EU members of the EPO (the UK and Spain, for example) and non-UP participating States of the EU and EPO (Spain and Poland, for example), will still be available.
Eventually, the UPC will have jurisdiction over all patents granted by the EPO (both UPs and conventional European patents) in the UP Member States. The earliest possible date for this will be seven years after the UPC comes into force (i.e., no earlier than June 2030). After this time, the only way to avoid the UPC will be to file separate applications at the national patent offices (e.g., separate French, German, and Italian applications).
For pending and future applications, the question whether to utilise the UP system will depend on the number of countries in which the European patent is to be validated and may also depend on considerations regarding a possible litigation. In addition, the question of whether it is economically reasonable to request unitary effect typically also depends on the actual selection of countries for which protection is sought, and also on the length of the patent text, since translation requirements and individual validation costs vary strongly between different countries.
If protection is sought for a very large number of countries, requesting unitary effect may be advantageous. In contrast, if protection is sought for a small number of countries (e.g., only Germany, France and the UK), national validations may be more cost effective, especially if the desired countries do not impose translation requirements. In either case, separate validation is necessary in some countries, which are not EU members, such as the United Kingdom, Switzerland and Turkey, or which do not participate in the UPC, such as Spain and Poland.
If you have any questions about the UPC, contact Jeremy at jeremy@mbip.com.au and he would be glad to assist.