With under a month remaining before the Unified Patent Court (UPC) opens and Unitary Patents become available, many practitioners are focussed on opting out their existing European patents from the jurisdiction of the UPC. However, it is also important to understand and appreciate the significant benefits Unitary Patents will provide, many of which are not often discussed and may not be immediately apparent.
From 1 June 2023 it will be possible to elect a Unitary Patent for any patent granted by the European Patent Office (EPO). A Unitary Patent is a single patent right covering at least 17, and in due course possibly up to 24, of the 27 EU countries. It will require a single translation at validation and a single renewal fee, rather than separate validation, translations and renewal fees at each national office as is currently required for a conventional bundle of European patents.
For most businesses, the primary benefit of electing a Unitary Patent will be large cost savings on validation, with only a single translation required, and on renewal fees. The renewal fees for a Unitary Patent covering 17 countries will be equivalent to the total cost of renewal fees for separate patents in just 4 countries. Therefore, for coverage of more than a few countries the Unitary Patent is likely to save money compared to traditional national validation. From another perspective, the Unitary Patent will provide much broader coverage across at least 17 countries at a cost comparable to a handful of national validations. The Unitary Patent thus provides a cost-effective and more affordable solution to protecting an invention as widely as possible across Europe.
In addition to reduced costs, a Unitary Patent will simplify and streamline various aspects of portfolio management. Paying a single renewal fee rather than renewal fees to each national office will reduce the administrative burden. Furthermore, preparing and negotiating assignment and licensing agreements is likely to be more straightforward when a single Unitary Patent is involved, and it will certainly be easier and cheaper to record assignment of a Unitary Patent at the EPO rather than at multiple different offices with different, and often more stringent, requirements.
Unitary Patents will be litigated exclusively at the UPC, which will offer highly attractive enforcement options and opportunities. It will be possible to bring a single infringement action covering all participating countries, potentially providing massive cost savings relative to multiple infringement actions. Also, a UPC infringement action will be in a single language, which can be English, an advantage for businesses in English-speaking countries. In comparison, coordination of multiple infringement actions in different languages in different countries with varying procedures and practices is highly complex and often provides unpredictable and inconsistent results.
Although there is a degree of uncertainty regarding exactly how the UPC will operate, it will set very tight time limits and will conclude actions much quicker than many national courts currently do. It is also expected that the UPC may take a pro-patentee position on some issues.
Enforcing a Unitary Patent will have particular advantages in certain complex infringement scenarios. Where there is a claim for a multistep process, and different process steps are carried out in different countries, there will be more flexibility to choose the country in which to litigate (via a local division of the UPC), without being tied to the country in which the last step is performed. Further, there will be increased scope to bring an action for contributory infringement of a Unitary Patent, in particular where supply of means for putting the invention into effect is effected in a different country from that where direct infringement takes place.
As the procedures of the UPC are derived from the legal systems of multiple countries, enforcement of a Unitary Patent at the UPC will allow proprietors to utilise useful procedures from different countries in combination. For example, a proprietor may want to obtain evidence regarding an infringement using an ex-parte saisie-contrefaçon seizure, otherwise only available in certain countries, in particular France, whilst also pursuing a preliminary injunction, which is rarely granted in France.
If successful, an infringement action for a Unitary Patent will provide further advantages. If infringement has occurred in multiple countries, then damages will be recoverable in relation to losses in all of the countries, in a single action. Similarly, broad injunctions across the participates countries will be available, reducing the need to chase infringers around Europe with multiple infringement actions.
Electing a Unitary Patent to protect innovations will therefore provide cost savings, streamlined portfolio management and attractive enforcement options. However, these benefits must be balanced against the risk of revocation of the Unitary Patent in a single action and uncertainty associated with using a new court. Therefore, creative thinking and tailored strategies should be employed when Unitary Patents become available. For example, proprietors may want to consider using divisional applications at the EPO to obtain the grant of multiple patents, some of which are validated as Unitary Patents and some of which are validated nationally, in order to take advantage of the enforcement options available at the UPC, whilst maintaining additional protection that cannot be revoked at the UPC.
J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
