I get patents at the EPO – what do I need to do about the new Unitary Patent NOW?

If you haven’t had time to get to the bottom of the new system, or are overwhelmed by the options, here’s a quick guide to everything you need to know for now about a system that may appear at the end of the year.

Current system – the “classic route”

At present, once a European patent is granted by the EPO, then it is validated by various formal steps in contracting states of interest¹. If you want to litigate the patent, it needs to be handled in the national courts in each country of interest which would deal with both infringement and validity. The only exception to this is that a central attack is available at the European Patent Office by way of opposition which must be lodged within a non-extendable nine months of grant of the patent.
 

What is changing?

The UPC

From the end of 2022 or the start of 2023, the Unified Patent Court (UPC) and Unitary Patent (UP) will be introduced at the same time. The UPC will provide a central court for litigating a European patent covering the majority (but not all) of the EU contracting states² dealing with infringement and validity issues allowing multinational injunctions or invalidation to be sought in a single action. Cons of the system are that it is untested, and that any patent in the system will be vulnerable to a centralised validity attack for all UPC-contracting states at any time during its life rather than the nine-month opposition period. Existing granted European patents will automatically be subject to the UPC rather than litigable through the respective national jurisdictions for the UPC-contracting states, although there is an opt-out period which will last for at least seven years during which the classic route can be selected instead.

The UP

Once the system starts, it will be possible to choose either the classic route of multiple national validations or a blend of the UP route – a single designation covering all of the UP-contracting states – plus any additional non-UP-contracting countries through the classic route. Both routes will still be through the EPO. For the UP designation, there will be a single annual renewal fee equivalent to a basket of four or five national renewal fees. In addition, during a transitional period (at least 6 years) a translation into another official EU language will be required. It will be possible to opt for classic route EPs but not UPs out of the UPC.
 
The pros of the classic route are that for fewer than four countries it will likely be more cost effective in the short-term (no translation in many instances) and long-term (lower renewal fees) and it will be possible to abandon individual states later, reducing the renewal fees further; additionally, central attack will be avoidable after the nine month opposition period. The pros of the UP-designation are that it will be more cost effective if a large number of UP-contracting countries are sought, plus, it will provide access, where desired, to the UPC.

Things you can be thinking about NOW for pending patent applications

The EPO have recently announced two transitional measures that will allow applicants with pending patent applications that have received an intention to grant communication to file an early request for unitary effect and to delay grant until the UP system comes into force. These transitional measures have not come into effect yet, so if UP is attractive to you, you might want to ensure that you have not responded to an intention to grant communication approving the text before the transitional measures come into play. Depending on the response deadline, various options are available, such as using further processing or challenging the proposed text. Additionally, you may be interested in more nuanced strategies, including filing divisional applications – for example, you may decide that you want a UP for one set of claims but a divisional through the classic route for another set of claims, hedging your bets. The best approach will vary case by case – contact us if you would like to discuss this in more detail. You may have patents granting now, however, so if UP looks attractive to you, there’s no time to lose!

For anyone seeking more information about the UP and / or the UPC, visit our Knowledge Hub.

Over the next coming months, Kilburn & Strode will run regular online webinars on the UP and the UPC. Consider joining our network of IP professionals, so we can contact you when the next event is coming up and send you thought leadership content.