UPC Update

The decision can be based on how the patents would be effected: For the Unitary Patent, infringement or revocation will be decided for all states at once at the Unified Patent Court. For example, a positive infringement decision with a unitary effect in all states can be a great win for the applicant, while a revocation decision with a unitary effect in all states would be a great loss for the applicant, the patent would be lost in all states at once. The applicant might choose the Unitary Patent only for very strong patents.

The decision between EP patent and Unitary Patent can also be based on the different annuity costs.

• • If the EP patent is to be validated in three or fewer countries, the EP patent is more cost effective.
  • If the EP patent is to be validated in four or more countries, the Unitary Patent is more cost effective.

• If the applicant decides on an EP patent, nothing needs to be done. If the applicant decides on a Unitary Patent, a request for unitary effect must be filed. Please let us know for all your pending EP patent applications if you wish to request a Unitary Patent.
  
• For cases in which the applicant decides on a Unitary Patent, but the grant of the patent might occur before the Unitary Patent is available, a delay of the grant of the patent and/or an early request for the unitary effect may be possible.

The start date for the new system comprising the Unified Patent Court and the Unified Patent is scheduled for 1 June 2023. Originally, it was announced for 1 April 2023 (see UPC publication of 6 Oct 2022), but was now postponed for 2 months (see UPC publication of 5 Dec 2022).

The start of the Sunrise Period will be determined by the deposit of the instrument of ratification by Germany, which was originally announced for December 2022, but is now expected in February 2023. Accordingly, the start of the Sunrise Period will also be postponed from 1 January 2023 to 1 March 2023.

The time has come to prepare your EP patent portfolio for the Unitary Patent and the Unified Patent Court!

• If the applicant decides for the authority of the Unified Patent Court, nothing needs to be done.
• If the applicant decides for the authority of the national courts, an Opt out request needs to be filed.
• Please let us know which court system you would prefer for all your EP patent applications and EP patents. For cases in which the applicant decides for an Opt out, this request must be filed during the so-called Sunrise Period, which will take place shortly before the start of the Unified Patent Court.
• Once proceedings before the Unified Patent Court have already begun, the Opt out will no longer be possible.

Three transitional measures will already be available during the Sunrise Period, in some cases ((1) and (2)) as soon as Germany deposits its instrument of ratification:

• The applicant of a European patent application may file a request to delay the grant of a European patent in order to still be able to obtain a Unitary Patent later. The request can be validly filed:
  • If the Communication under Rule 71(3) EPC has been issued by the EPO; and  If the applicant has not yet approved the text proposed for grant.
• The applicant of a European patent application having received the Communication under Rule 71(3) EPC may file an early request for a unitary effect so that a Unitary Patent will be registered immediately on the entry into force of the UPCA. The request can be validly filed:
  • If the Communication under Rule 71(3) EPC has been issued by the EPO; and  If the applicant has not yet approved the text proposed for grant.
• The owner of any previously granted classical European patents may register an opt-out (more details below). Such opt-out will have the effect that the UPC is no longer responsible for infringement and invalidity actions regarding these patents. Instead, the relevant national courts will be responsible. The opt-out request needs to be filed with the UPC registry in Luxembourg and may already be filed during the Sunrise Period with the advantage that it is effective immediately at the start of the UPC.

24 EU member states have signed the UPCA. To be covered by the Unitary Patent, an EU member state must have signed and ratified the UPCA when the unitary effect is registered.

17 EU member states have already signed and ratified the UPCA (the contracting EU member states – CMS).

When the new system starts, said 17 CMS (which are also EPC member states) will be covered by the Unitary Patent:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.
Importantly, the geographical scope of a Unitary Patent will remain the same for its lifetime and will not be extended to any EU member states who ratify the UPCA after registration of the patent’s unitary effect.

The EPC has 39 member states. Currently, the Unitary Patent is not available for 22 EPC member states. For these 22 member states, only conventional European patents (bundle patents) are available.

12 EPC member states are not EU member states: Albania, Iceland, Switzerland, Liechtenstein, North Macedonia, Monaco, Montenegro, Norway, San Marino, Serbia, Turkey, and the UK. For these EPC member states a Unitary Patent is not available and will not be available in the future.

3 EPC member states are also EU member states but not participate in the UPC system: Croatia, Poland, and Spain. For these EPC member states a Unitary Patent is not available; however, they can sign the UPCA any time.

7 EPC member states are also EU member states and have already signed, but not yet ratified the UPCA: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia. For these EPC member states a Unitary Patent may be available in the future.

Conventional European patents (bundle patents) granted by the EPO will still cover the above-mentioned EPC member states. However, for these EPC member states, the conventional European patent needs to be validated, maintained, and enforced before National Courts as now.

Costs before grant: The costs for filing and prosecuting a European patent application will remain the same. There is no official fee for a request to delay the grant of a European patent, an early request for a unitary effect, or the request for a Unitary Patent.

Translation fees: During a transitional period of at least 6 years, a translation of the whole patent specification is required. If the language of the patent is English, a full translation of the specification into any other official language of the EU is required. If the language of the patent is German or French, a full translation of the specification into English is needed. Please note that the “translation fees” transitional period is at least 6 years, whereas the “opt-out” transitional period is 7 years (see below).

Renewal fees after grant: The renewal fee for maintaining a Unitary Patent approximately equals the sum of the renewal fees of the four largest EPC member states (DE, FR, GB, NL). The total cost of renewal fees over the first ten years, which is the average lifetime of a European patent, will be less than 5,000 EUR.

After the start of the UPC System, Unitary Patents will automatically fall within the competence of the UPC. Further, conventional European patents and SPCs
(Supplementary Protection Certificates) will also fall within the competence of the UPC, unless the patentee opts-out the conventional European patent and/or SPC. Opt-out means that the conventional European patent/SPC is removed from the UPC’s competence for its lifetime and the national courts remain competent. For Unitary Patents, an opt-out is not possible.

An opt-out is only possible once and can be filed at any time from the start of the Sunrise Period until one month before expiry of a transitional period of at least 7 years.
An opt-out can no longer be requested once an action is pending before the UPC. The opt-out request needs to be filed for all EPC member states of a conventional European patent.
An opt-out request must be filed in the name of all patentees. It may be withdrawn once.
The opt-out request needs to be filed with the UPC registry in Luxembourg.
Effective date of the opt-out is the entry into the register of the UPC.

It is important to start preparations now:

• The Sunrise Period will already start within few months.
• You need time to review your existing European patents and to decide which European patents should be opted-out. This includes checking the status of ownership in the European and national patent registers.
• You need time to potentially file requests for transfer of rights to update the European patent register to opt-out or to obtain a declaration of proprietorship.
• You need time to discuss the desired opt-out with joint patentee(s).
• You need time to consider patents for which you have been granted a license, or for which you have granted a (in particular, exclusive) license.