The Unified Patent Court Agreement Explained – Pt1

Contents:

• Which countries does the Unitary Patent cover?
• How will you obtain a Unitary Patent?
• What happens once the Unified Patent Court Agreement (UPCA) is in force?

Which countries does the Unitary Patent cover?

A European Patent can potentially cover all states contracting to the European Patent Convention (EPC), currently numbering 38 countries.

Of those 38, the Unitary Patent (UP) will potentially be available to cover all 27 member states of the European Union (EU).  It should be noted however that not all EU states have decided to participate (e.g. Currently Poland, Spain, Czech Republic & Croatia) and others have not yet joined the system.  As things stand (at the time of writing) 17 EU states will initially be covered once Germany ratifies the agreement.

More EU states will eventually join the UP system, but a Unitary Patent will only cover the EU states that are participating at the time the European patent is registered as a Unitary Patent.  This means that there will be different generations of Unitary Patent covering different territories within the EU.

Additionally, certain important EPC states, such as the UK, Norway and Switzerland are not EU states and therefore cannot be part of the UP system. Patents in these countries will continue to be validated individually.

It should be noted that the Unitary Patent System will not begin to take effect until Germany has ratified the Unified Patent Court Agreement (UPCA), when the initial sunrise period* begins.

* The period between the German deposit of Unified Patent Court Agreement (UPCA) ratification and the UPCA coming into force is known as the “sunrise period”. This will last for 3 months

How will you obtain a Unitary Patent (UP)?

The Unitary Patent will be administered by the European Patent Office (EPO) and patent proprietors will be able to obtain a UP, after grant of their patent, by registering their European patent as a UP.

The process prior to grant will not change, so the usual filing, examination and opposition procedures will apply as before.

It is worth noting that any European patent application filed back as far as 2007 but not yet granted, is capable of being registered as a UP after grant but, any European patent that has a grant date before the UP system comes into force will not be registerable as a Unitary Patent and will have to be validated using the current system.

The EPO has indicated that they will accept requests to delay grant of European patents to allow them to be under the UP system.

Once a European patent grants; if a Unitary Patent is required, the request must be filed at the EPO within 1 month of the date of grant.  The deadline cannot be extended, no official fees are payable at this stage, but a translation of the whole patent will be necessary within this timeframe. If the original patent was in English, then a translation into another language of the EU is required.  If the patent is in French or German, then a full translation into English is required. Machine translations will not be accepted at this stage.

The UP system is attractive as the patent proprietor will gain protection in all contracting EU countries but would not have to pay individual translation fees to each national office. This makes the new system substantially cheaper if validation would typically have been sought in several EU countries.

What happens once the Unified Patent Court Agreement (UPCA) is in force?

Once the UPCA is in force, applicants for European patents will have the option, on grant, to choose a Unitary Patent covering 17* participating countries, instead of validating nationally in those countries. Although they can still choose to validate nationally and will need to do so anyway in any non-participating countries.

If national validation in a UPC participating country is chosen, then they will also need to decide if they “opt out” of the jurisdiction of the Unified Patent Court (UPC) or remain under its jurisdiction.

Once the UPCA is in force, patentees can enforce their European patents validated in UPCA countries through the Unitary Patent Court (UPC).

* Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden

Disclaimer: This article is intended to explain new knowledge to our readers and to be used only as a brief guide. The information at the time of writing has been summarised by our Professional team based on information available to them and the EPO. To receive IP Advice for specific actions on existing Patents or new before considering whether or not to opt out of UPC please get in touch with our legal team. Every patent will have different parameters to consider and it is prudent to get legal advice moving forwards to ensure the right level of protection remains in place.