The UPC/UP project in Europe has seen many ups and downs, with false dawns and sudden reversals as part of the rollercoaster over recent years. So where are we now as the system finally moves forward to full implementation? This note will summarise some of the key features and take- home messages, but for more information on the details please contact us to discuss further.
The Unitary Patent
The Unitary Patent will effectively be a new designation in a European patent that can be elected at the time of grant of a European patent application by the European Patent Office (EPO). If Unitary Patent protection is granted then the European patent will take effect in the various member states of the European Union (EU) that are taking part in the UPC/UP system. The same European patent can also still be validated in other non-European Union member states as usual and also in any other European Union member states that are not part of the system. Ultimately, the Unitary Patent will offer the opportunity to secure patent protection in up to 25 EU member states.
Note that not all EU member states are taking part in the system and at the start the Unitary Patent will only extend territorial coverage to those participating states which have ratified the UPC Agreement. At the beginning of the Unitary Patent system, the Unitary Patent may therefore only include a smaller subset of the 25 possible participating member states. Remember also that a European patent application contains the designation of 38 states, including both EU member and non-member states. The national validation procedure on grant of a European patent protection will therefore still remain relevant.
The main advantage of the Unitary Patent is that it provides a single unitary patent right subject to the payment of a single annual renewal fee. The new system will remove the requirement for translations of the patent specification to be filed as part of the grant process after the expiry of a transitional period. Thus, the new system should provide patent proprietors with significant cost savings.
Finally, the Unitary Patent will be subject to the exclusive jurisdiction of the new Unified Patent Court (UPC) in Europe. Instead of pursuing multiple parallel actions for patent infringement in the courts of different EU member states, the proprietor of a Unitary Patent can enforce patent rights centrally in the new court. The same court will also have jurisdiction over national validations of existing and future European patents (so-called classical European patents) unless the proprietor files an opt-out declaration from the jurisdiction of the UPC.
Kilburn & Strode LLP, as a leading firm of European Patent Attorneys with offices in the United Kingdom and the Netherlands, is fully able to handle all matters in relation to the Unitary Patent. As noted above, the Unitary Patent will be granted by the European Patent Office. The departure of the UK from the EU (so-called “Brexit”) does not impact upon our firm’s ability to represent clients before the EPO.
Key decision points for applicants upon implementation will be:
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to understand the system and reasons for selecting Unitary Patent protection compared to a strategy based on national validations of a European patent
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to understand the cost implications of selecting Unitary Patent protection compared to a strategy based on national validations of a European patent
The Unified Patent Court
The Unified Patent Court (UPC) is designed to hear actions for patent infringement and revocation concerning the new Unitary Patent as well as any standard national validation of a European patent for a state which is part of the system, where the national validation of the European patent has not been opted out of the jurisdiction of the new court.
The UPC will be composed of Local Divisions established in various participating EU member states. The court may also have Regional Divisions covering the territory of some participating EU member states as a group. The Local and Regional Divisions will act as a court of first instance for hearing patent infringement actions and counterclaims for invalidity as defences to infringement. Actions will be brought before the relevant Local or Regional Division where the infringing act occurred or where the defendant has a residence or place of business. If the defendant has no residence or place of business in one of the participating member states then the action will be brought where the infringement has occurred. If the state has no Local or Regional Division established then the case will be brought before the Central Division.
In addition to hearing cases where there is no relevant Local or Regional Division, the Central Division is also tasked with hearing actions for revocation or declarations of non-infringement and more complex infringement cases. The Local and Regional Divisions have the power to transfer cases to the Central Division also. The Central Division will be split into separate sections hearing cases according to the subject matter of the patent with one seat in Paris and another in Munich. Significantly, the Central Division will also be the forum for cases for revocation (other than as counterclaims in defence to a claim for infringement).
There will be a Court of Appeal to review cases on appeal also. Issues requiring an interpretation of EU law may be referred to the Court of Justice of the European Union (CJEU) also.
The judges appointed to hear cases in the UPC system will be centrally trained and recruited from the participating member states. The cases will be heard by panels composed of judges from different member states. The language of the proceedings in a UPC action is subject to detailed rules (mostly following the language of the state where the Local or Regional Division is based), but in many instances the parties can also agree upon the language of the patent, or an official language of the EPO (for example, the divisions of the UPC may therefore select English as a working language). The Central Division is required to use the language of the patent.
The proceedings are closely controlled and there is a strong element of case management in the Rules of Procedure of the UPC. The system is therefore driven by the cases of the parties being complete in writing so the overall procedure resembles proceedings at the EPO in many ways.
The UPC system also provides that European Patent Attorneys may act on behalf of the parties before the UPC if the European Patent Attorney has an appropriate additional litigation qualification. The nature of the Rules of Procedure mean that European Patent Attorneys familiar with the opposition and appeal proceedings at the EPO may be particularly well suited to representing parties in actions before the UPC.
The system for filing opt-out requests for existing and/or future national validations of European patents will be simple. The period for filing opt-outs will be governed by the transitional period which will last for an initial period of 7 years (which can be extended further). Any party may file an opt-out request. In addition, a national validation may be opted back in to the system subsequently.
Kilburn & Strode LLP has a skilled team of European Patent Attorneys who have extensive experience handling EPO opposition and appeal work and are well-versed in dealing with complex EPO opposition cases where there may also be corresponding litigation proceedings. We are therefore well-placed to support and advise our clients on how to navigate the procedures at the UPC and the inter-relationship with the EPO opposition process.