The Unitary Patent and the Unified Patent Court (UPC) will begin on 1 June 2023.
A Unitary Patent granted by the European Patent Office will have a unitary effect in 17 member states – Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. A unitary patent will only be enforceable centrally at the UPC.
Any non-unitary parts of a European patent (i.e., the UK, Spain, Poland and several others) will continue to be enforced in the national courts.
The EPO opposition system to challenge patents centrally at the EPO within the 9-month opposition period will continue. However, Unitary Patents will also be subject to revocation proceedings at the UPC.
The grant process for obtaining patents in Europe will remain unchanged and will still happen before the European Patent Office. If applicants choose to have a Unitary Patent, it will cover the above 17 states, for the payment of a single renewal fee. The relevant official fees are listed here.
There are a couple of scenarios to consider:
Pending Applications
Applicants with pending European patent applications will need to decide whether they want a Unitary Patent when the EPO grants the application. Even if they do not want a Unitary Patent, they will still need to decide whether they want the national parts in any of the Unitary Patent states to be subject to the jurisdiction of the UPC.
For applications which are in order for grant between 1 January 2023 and 1 June 2023 there will be an option to delay grant until after 1 June 2023, to allow applicants obtain a Unitary Patent. It might also be possible to delay grant for patents where an intention to grant communication has already been received.
After 1 June 2023, a request for a Unitary Patent must be filed at the EPO within one month of grant. There is no official fee for requesting a unitary patent. However, a translation of the whole patent specification will be required. The decision to have a unitary patent is irreversible.
If applicants do not want their European patents to be subject to the new and untested UPC in the 17 Unitary Patent states, they should request an ‘opt-out’ before grant. There is no official fee for such a request.
The opt-out request is reversible. Patentees can opt back in to the UPC’s jurisdiction at a later date, even if they initially opt-out of the system.
Existing Patents
Existing European patent holders will need to consider whether they want their European patents to be subject to the jurisdiction of the new UPC. If no action is taken, the parts of existing European patents which cover the 17 Unitary Patent states, will automatically be subject to the jurisdiction of the UPC. Challengers could try to revoke patents in all Unitary Patent states at the UPC, even after the EPO’s centralized opposition procedure has finished. Taking no action could therefore increase the risks associated with European patent portfolios.
Existing European patents which cover non-Unitary Patent states will continue to be enforced only in the relevant national courts.
Patentees can ‘opt-out’ the relevant 17 national parts of pre-existing European patents from the jurisdiction of the UPC. An ‘opt-out’ request should be made before 1 June 2023 to avoid an unwanted revocation action being started in the UPC.
Summary
Some more information on the Unitary Patent and the UPC is here.
The decision on whether to opt-out or be part of the new system is not straightforward. It will depend on factors such as territorial coverage, licensing and enforcement strategies, commercial importance of the patents, and budget.
Please contact your usual Cleveland Scott York patent attorney or mail@csy-ip.com to discuss how to proceed.