Home » Patents » The unitary patent system: Topics of Interest (Q&A)

The unitary patent system: Topics of Interest (Q&A)

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

IMG_8533Despite there being some more work to do in bringing the unitary patent system online (not to mention the possibility that Brexit could still potentially torpedo or severely slow down the whole process), IPcopy has been asked a growing number of questions recently about the unitary patent and the Unified Patent Court.

What follows below is a selection of questions that we’ve encountered over the last few weeks. This is by no means an exhaustive summary of the current state of play of the unitary patent but we hope the discussion below is useful nonetheless.

A list of topics is below. Click on the topic of interest to jump to the correct part of the post.

What is the unitary patent system?
When will the new unitary patent system start?
How many countries will be taking part?
What is the sunrise period?
Will the timescale slip?
How can a unitary patent be obtained?
What’s the cost of a unitary patent?
What will the renewal fees for a unitary patent be?
Will it be possible to convert a unitary patent into a bundle of EP patents?
Will it be possible to request a unitary patent and request a traditional European patent in respect of the same countries?
How will a unitary patent impact portfolio management?
What about Brexit and the unitary patent system – will this impact anything?
When the UK does leave the EU what will happen to unitary patents as far as the UK is concerned?
Opting out – what is it?
What are the costs of the opt-out?
Who can register an opt-out?
What are the pros and cons of opting out?
Revocation actions in the UPC versus EPO Oppositions
Other factors to consider with respect to the UPC and/or Brexit?

What is the unitary patent system?

The unitary patent system hopes to create a European patent registration and litigation system in which a patent owner can choose to register their granted European patent as a unitary patent having unitary effect across participating member states. In parallel a new court, the Unified Patent Court, will have competence to hear actions relating to such unitary patents.

The unitary patent will coexist with national patents and also traditionally validated European patents such that patent owners will have the choice whether to use the unitary patent option or to stick with the current arrangements.

The UPC will have joint competence with national courts to hear cases relating to traditional European patents subject to transitional provisions in which a patent owner can choose to opt their traditional European patent (e.g. an EP(UK)) out of the competence of the new UPC.

↑ Top ↑

When will the new unitary patent system start?

The current timetable has the unitary patent system going live at the beginning of December 2017. There are however a number of factors that could impact this timetable including the speed with which the UK and Germany complete their ratification procedures.

↑ Top ↑

How many countries will be taking part?

The UK and Germany are required participants in the system. Once they’ve signed up the system can move forward and, as it stands, would commence with 14 countries taking part. Between now and December however it is likely that a few more countries will join up and the system could begin with 17 or 18 countries.1

↑ Top ↑

What is the sunrise period?

The sunrise period will begin, according to the current timescale, in September 2017 and run until the court opens in December. During this period it will be possible to lodge a request to opt out European patent applications and granted European patents from the competence of the new Unified Patent Court.

↑ Top ↑

Will the timescale slip?

This is the Million Dollar Question. For the timescale to be met a few things have to happen: the UK needs to complete its ratification procedures, Germany needs to complete its ratification procedures and more countries need to sign the Protocol to the UPC Agreement which will allow certain parts of the Agreement to be applied early in the so called Provisional Application Phase.

It is hoped that the Provisional Application Phase will begin towards the end of May 2017. The UK recently announced that it is on track to complete its ratification processes in time to meet this date and Germany is also on track apparently to complete ratification procedures in the next few weeks.

Any slips to the timescale are likely to become clear therefore in the next month or so. The status of the UK’s progress can be tracked in IPcopy’s post here.

↑ Top ↑

European patents with unitary effect

How can a unitary patent be obtained?

A request for unitary effect will be made to the EPO and must be lodged within one month of grant of a patent. In an earlier IPcopy post (see here) we highlight the conditions that a European patent application needs to meet to be able to request unitary effect.

↑ Top ↑

What’s the cost of a unitary patent?

There is no official fee for requesting unitary effect.

↑ Top ↑

What will the renewal fees for a unitary patent be?

Under current arrangements, renewal fees at the EPO need to be paid from the third year after filing. After grant, renewal fees are paid to the national patent offices where the granted EP patent has been validated.

For unitary patents the EPO will levy renewal fees that are broadly equivalent to the renewal fees that would be payable in the top four validating states (Germany, France, the UK and the Netherlands, the so-called “True Top 4” scheme). Given that it can take a European patent around 5 years to get to grant patent owners will actually be paying a mixture of fees (EPO maintenance fees up to around year 5 and then unitary patent fees thereafter).

The actual renewal fee levels can be found here.

Patent owners considering using the unitary patent system should assess their likely renewal fee costs carefully with their representatives. Although savings may be available for patentees that traditionally validate in a lot of countries the situation is less clear cut for those that either validate in a handful of countries only or who practice portfolio management by pruning nationally validated patents from their portfolio.

↑ Top ↑

Will it be possible to convert a unitary patent into a bundle of EP patents?

No. Once a unitary patent has been selected it will not be possible to convert into a traditional bundle of nationally validated EP patents. This will have an impact for anyone wishing to trim their patent portfolio over time in order to reduce renewal costs.

↑ Top ↑

Will it be possible to request a unitary patent and request a traditional European patent in respect of the same countries?

In other words, will it be possible to request both a unitary patent and an EP(UK)?

No. In respect of the countries taking part in the unitary patent system there will be a choice between either a unitary patent or a traditional European patent. It will not be possible to hedge your bets by choosing both options in respect of the same2 invention.

↑ Top ↑

How will a unitary patent impact portfolio management?

Currently it is possible to drop patents in some validated states in order to manage annual renewal costs. With a unitary patent this option is not available – there will be a binary choice between maintaining the patent and dropping it. Careful consideration should therefore be given when choosing the unitary patent option.

↑ Top ↑

What about Brexit and the unitary patent system – will this impact anything?

In the immediate aftermath of the EU Referendum vote in the UK progress toward delivering the unitary patent system ground to a halt in the UK and put the whole scheme in doubt. More recently however the UK Government has indicated that it is committed to continuing preparations to ratify the UPC Agreement and to bring the system into being.

Until the UK completes its procedures though there will be some lingering doubts whether the UK is truly committed to the unitary patent system. It should become clearer after Easter whether the UK is keeping up its end of the bargain. Follow UK progress here.

Brexit may also impact the unitary patent system after the UK actually leaves the EU. The way in which the unitary patent system regulations and agreements are structured means that a participating member state needs to be a member of the European Union. Quite how the UK might continue participating after its exit from the EU is currently uncertain and will presumably be part of the UK-EU negotiations. This is therefore something that it unlikely to be resolved in the near future.

↑ Top ↑

When the UK does leave the EU what will happen to unitary patents as far as the UK is concerned?

We don’t currently know. Once the UK leaves the EU, a unitary patent will no longer have effect in the UK. It is likely that the UK would put in place a relatively simple conversion arrangement to convert an EP(UP) to an EP(UK). Again, this is something that will become clearer over time.

In light of the uncertainty caused by Brexit, Businesses may therefore decide to avoid both requesting unitary patents and using the new Unified Patent Court.

↑ Top ↑

Opting out – what is it?

When the unitary patent system comes into effect and the transitional period has finished (there will be at least 7 years and possibly 14 years of the transitional period) then the Unified Patent Court will have exclusive jurisdiction over unitary patents and traditionally validated European patents in the UPC participating member states.

During the transitional period however there will be a dual jurisdiction arrangement in which cases may be brought in either the UPC or the national courts.

For patent owners of traditionally validated European patents (and pending European patent applications) it will be possible to opt-out of the competence of the Unified Patent Court. It will subsequently be possible to withdraw such an opt-out. European patents with unitary effect cannot be opted out from the competence of the UPC.

Opt-outs can only be registered if an action has not been brought before the UPC. Withdrawal of opt-outs can only be registered as long as proceedings have not started in a national court.

Opt-out requests can be made while a European patent application is still pending.

↑ Top ↑

What are the costs of the opt-out?

There is no official fee for opting out a traditionally validated European patent or a European patent application. Similarly there is no official fee for withdrawing such an opt-out. It is likely however that patent firms will charge an administrative fee for performing such actions.

Opt-outs are effective for all designated states within the unitary patent scheme.

↑ Top ↑

Who can register an opt-out?

Patent proprietors can opt-out EP applications and EP patents. Where there are multiple proprietors then all proprietors need to agree to the opt-out. Licensees do not get the right to opt-out a patent from UPC competence.

↑ Top ↑

What are the pros and cons of opting out?

The UPC will give patent owners the ability to enforce their patents and obtain a decision that is effective in multiple countries. Since this is a new court however everything will, by definition, be new for some time and the court will be untested. There are likely to be a number of factors to consider when looking at whether to use the UPC or not and these are definitely factors that we would advise patent owners speak to their representatives about.

↑ Top ↑

Revocation actions in the UPC versus EPO Oppositions

If a traditionally validated European patent remains within the competence of the UPC (i.e. no opt-out is filed) then there is the possibility that this patent could be centrally attacked and revoked at any time. Effectively, the UPC will, for non-opted out patents, provide another opportunity to attack a patent after the EPO Opposition period has expired.

For patent owners concerned about competitors trying to clear a path through their patents consideration should be given to opting out from the competence of the UPC.

↑ Top ↑

Other factors to consider with respect to the UPC and/or Brexit?

The UPC and licence agreements

Under Article 47 UPCA an exclusive licensee can enforce a patent without the owner’s permission (unless the licence says otherwise). Non-exclusive licensees on the other hand cannot bring an action without the owner’s permission (unless provided for in the licence agreement). Both patent owners and licensees should therefore review their licence agreements now to make sure they say what everyone wants.

The UPC, licence agreements and the Opt-out

As referenced above, it is the “patent proprietor” not a licensee that gets to choose whether a European patent application or nationally validated European patent is opted out from the competence of the Unified Patent Court (see Article 83 UPCA). Licensees with a strong opinion on the issue of opting out should therefore ensure that their licences reflect this.

Joint applicants and the unitary patent

If you file patent applications in joint names then the manner in which a unitary patent will be treated as an item of property will actually be affected by who is named first on the application (Article 7(2) of the Unitary Patent Regulation). If for instance a German applicant appears first then German property law would apply (no permission required for a joint applicant to sell their share of the patent) whereas if a UK applicant is named first then the UK Patents Act will apply (permission required for a joint applicant to sell their share of the patent).

How will Brexit impact exhaustion of rights in Europe and the UK?

The existing rules on exhaustion of rights may cease to apply if the UK leaves the EU and does not join another agreement such as the EEA or EFTA. Whether or not this occurs will depend on the agreements reached in the “divorce” proceedings between the UK and the EU.

The above article provides a snapshot of some areas of consideration for the unitary patent system and Brexit. This article is for information purposes only and does not constitute legal advice. If you require IP advice on any of the subjects mentioned here please contact your legal representative.

↑ Top ↑

For more discussion of the unitary patent system please visit IPcopy’s Unitary Patent Package page.

For more discussion of Brexit please visit IPcopy’s Brexit & IP page.

Mark Richardson 11 April 2017

List of ratified states (as of 11 April 2017): Netherlands, Bulgaria, Finland, Portugal, Luxembourg, Malta, Denmark, Belgium, Sweden, France and Austria

The unitary patent system will start with the above 12 countries plus the UK and Germany at a minimum. Potentially Lithuania, Slovenia, Latvia and Hungary will have completed their ratification processes before the system begins.

Eagle eyed readers will note that we said “the same invention” above. Although it will not be possible to get a unitary patent and a traditionally validated European patent in respect of the same invention it would be possible to file a divisional application and pursue two very similar inventions. Upon grant one patent could request unitary effect and the other one could be traditionally validated.

As far as double patenting between a national patent and a unitary patent is concerned then this will probably vary on a country by country basis. The UK for example is not going to allow a GB patent in respect of the same invention covered by a unitary patent. Germany on the other hand appears to be willing to allow such double patenting.

↑ Top ↑


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: