In June 2023 the European patent landscape will see one of the most dramatic changes in decades with the introduction of the Unitary Patent (UP) and the opening of Unified Patent Court (UPC). In a short series this blog will go through the main characteristics of the system and decisions that need to made to get ready and to protect inventions, both new and existing. Part two: scope of the Unitary Patent system.
Whereas the European patent can cover up to 39 member states of the European Patent Convention (EPC), the Unitary Patent system is only open to EU member states (although there was some discussion about this in the period after the Brexit referendum, when the UK initially had plans to stay in the UP system).
The UPC Agreement (UPCA) has been signed by 25 EU member states, but so far only 17 have ratified the Agreement (or, in the case of Germany, will do this in February and thereby launching the UP system): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxemburg, Malta, Netherlands, Portugal, Slovenia and Sweden.
It means that at its start the Unitary Patent will cover these 17 member states only. And that, in many cases, patent proprietors will want to extend protection of their inventions to other states – Spain, Turkey, Switzerland and/or the United Kingdom for instance – with traditional European or national patents.
At its start the Unitary Patent system will cover 17 member states
If more member states ratify the UPCA in upcoming years, the scope of existing Unitary Patents will not be extended to those countries.
A Unitary Patent may be licensed for the whole or part of the territories of the UP member states.
The fact that the Unitary Patent will automatically cover all member states was one of the reasons for Poland not to join. It was concerned it would harm the economy if its territory was flooded by Unitary Patents from businesses all over the world.
In Ireland a referendum has to be held before parliament can ratify the Unified Patent Court Agreement. This referendum will take place this year or in 2024.
Applying for Unitary Patent protection
The application procedure for a Unitary Patent is the same as with a traditional European patent. The difference is post-grant: the patent proprietor must submit a ’request for unitary effect‘ to the EPO, no later than one month after the date of publication of the mention of the grant in the European Patent Bulletin. The request shall preferably be filed online and is free of charge.
The EPO will register the unitary effect in the Register for Unitary Patent protection, and inform the requester of the date of registration. If the request has been filed beyond the one-month deadline, no extension is available.
Since the start of 2023 transitional measures for patent applications apply:
Firstly, applicants will be able to file early requests for unitary effect already before the full start of the UP system.
Secondly, the applicant can request to delay the grant of a European patent in the final phase of the procedure. In this way it can be avoided that applicants miss the opportunity to obtain a Unitary Patent in the transitional phase.
The forms to apply for one of these transitional measures are available here.
In case of co-ownership of a patent, the nationality of the first applicant will decide what national law is applicable
The Register for Unitary Patent Protection will be part of the European Patent Register and will register any limitation, licence, transfer, revocation or lapse of a European patent with unitary effect, the participating Member States in which the patent has effect, the date of filing – and, if applicable, the date of any withdrawal – of a statement on licences of rights.
The Register will also contain data as to the payment of the renewal fees and information on decisions of the Unified Patent Court.
Influence of national law
A traditional European patent is essentially a bundle of national patents, enforceable before national courts according to different national legislations and procedures. This is different in the case of the Unitary Patent. Substantive patent law governing the scope and limitations of patent rights and available remedies in case of infringements have been harmonised in the UPCA. However, national patent law is still of influence, as article 7(1) Regulation 1257/2012 clarifies:
‘A European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register:
(a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or
(b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.’
If no applicant has his residence, principal place of business or place of business in a contracting member state, German law applies.In case of co-ownership of a patent, the nationality of the first applicant will decide what national law is applicable. This is important for issues such as entitlement, employee invention disputes, mortgaging, assignments, licences and the rights of co-owners. National laws differ significantly on these topics.
Part one in this series: the bumpy road to the Unitary Patent system
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“How much does it cost & court fees?”
Too much for small companies to satisfy a proper “Access to Justice”.
“Authors of Wolters Kluwer’s reputed Manual IP from various UP member states, as well as experts from the international high-tech company Philips, shed a light on their expectations.”
Thank you Leo!
SMEs were only the fig leaf behind which vested interests needed to hide to make the whole thing gullible for politicians.
The whole thrust is for proprietors:
– basic fee for infringement 11 000 + fee depending on the value of the litigation
– basic fee for nullity 20 000 € + fee depending on the value of the litigation.
It could not be more obvious.
The UP/UPC system has never been envisaged for SMES.
The big industry, for instance represented by Business Europe, and internationally active lawyer firms specialised in litigation will be the great beneficiary of the system.
In the post quoting Me Véron, Patent Robot had asked an interesting question. My reply was not published as apparently the comments were closed.
To a large part, my reply of then, plays also a role when it comes to applying for unitary protection and shows that in certain situations it is not possible to apply for unitary protection. It deals also with Art 142 and 149 EPC, more precisely with common designations.
As tribute to the question of Patent robot, I will briefly deal with the common designation of Switzerland and Lichtenstein. This common designation results from a Treaty between the Swiss Confederation and the Principality of Liechtenstein on Patent Protection (Patent Treaty) of 22 December 1978. See OJ 1980. 407. The joint designation Switzerland/Lichtenstein is possible under Art 142+149. Art 3 of the treaty mentions Art 149.EPC.
I am of the opinion that a common designation is only possible under Art 142 + Art 149 EPC. A common designation of all EU/EPC member states would have required a treaty binding all EU/EPC member states. Only then a patent granted by the EPO would have become a UP for all EU member states.
As it was clear from the beginning of the renewed efforts for an EC/EU patent, i.e. a UP that not all EU member states were wanting to participate, it was only possible to resort to an “enhanced cooperation”. This is why any document on the UP never mentions Art 149 and we just have a foot note under Art 142.
No possibility to request a unitary effect – Designation missing
At filing, all EPC member states are designated, cf. Art 79(1) EPC. However, an applicant can, up to grant, withdraw any designation of an EPC member state, cf. Art 79(3) EPC.
If an applicant withdraws the designation before grant of one of the UPCA contracting states, which he is free to do, a granted EP cannot have a unitary effect. But he will still have to opt-out from the UP during the transitional period. This does not appear very logical.
I am therefore inclined to say that Art. 142(1) EPC does, in principle not allow the choice between a multiple designation (unitary patent) and single designations (UPC national validations).
On the other hand, if one designation of a UPCA member state is removed under Art 79(3) EPC, then no unitary effect can be requested and single designations should be perfectly possible.
No possibility to request a unitary effect – Different sets of claims taking into account earlier national rights
A unitary effect is only possible if there the claim set is identical for all UPCA member states. The question of earlier national prior rights for UPCA contracting states is thus also very important during the examination phase. Without going much into detail a similar situation can occur in the presence of an earlier national prior art in one of the UPCA member states. Earlier national prior rights can be considered as a kind of “national prior art under Art 53” or a “national interfering application”.
According to the Guidelines G-IV, 6, where a national right of an earlier date exists in a contracting state designated in the application, there are several possibilities of amendment open to the applicant.
First, that designation may be withdrawn from the application for the contracting state of the national right of earlier date, see above.
Second, for such state, the applicant may file claims which are different from the claims for the other designated states (see H‑II, 3.3 and H‑III, 4.4).
Third, the applicant can limit the existing set of claims in such a manner that the national right of earlier date is no longer relevant. This is the most restrictive solution.
By requesting a different set of claims in order to take into account a national right of an earlier date in a UPC member state, no unitary effect can be requested and single designations should also be perfectly possible. But here as well, he will still have to opt-out from the UP during the transitional period. This does not appear very logical.
The situation becomes interesting as G 1/03 only applies to interfering European applications as national rights of an earlier date did, up to the emergence of the UPC, not play a direct role in the grant procedure.
Such occurrences will most probably not be very frequent, but they cannot be ignored. It will be interesting to see what the case law of the UPC will say. Will it accept disclaimers under G 1/03 and G 1/16 and introduce a disclaimer at UPC level for national rights of an earlier date. Wait and see.
“ Substantive patent law governing the scope and limitations of patent rights and available remedies in case of infringements have been harmonised in the UPCA.”
Has it?
How will claim construction / claim interpretation be done?
How will equivalents be dealt with?
How will the file wrapper be used?
How will indirect infringement be dealt with, especially if cross-border effects occur?
How will computer-implemented inventions ve dealt with – the national novelty examination is quite different between states…?
In my understanding, none of these have been harmonized yet and the UPC judges still need to develop case law as to how the UPC will deal with all this. Clarification is very welcome / needed!