Like a Southwest Airlines flight delay over the 2022 holidays, the long awaited arrival of the Unitary Patent (UP) and the Unified Patent Court (UPC) in Europe appears to be on final approach for landing. And much like one of our beloved airlines, the UP and UPC look to promise efficiencies and cost savings for frequent patent filers in Europe.
What Is a Unitary Patent?
In general, the UP is exactly what the name implies—a single patent that is effective in all countries of the European Union (EU) but only for EU countries that are participating in the Agreement on a Unified Patent Court (UPCA). This means countries such as Great Britain (does BREXIT ring a bell?), Sweden, and Norway, who are member states of the European Patent Office (EPO) but are not members of the EU, cannot participate in the UPCA. Some countries of the EU, such as Spain, Poland, and Croatia, have refrained from participating, and other countries (as of this writing), such as Ireland and the Czech Republic, have signed but not ratified the UPCA. (Here is the current status of EU countries that have ratified the UPCA.) Thus, it will be important for patent owners to keep a close watch on signatories to the UPCA and members of the EU when mapping out a patent strategy in Europe
With the new UPCA, there will now be three options for filing patent applications in Europe. The first two options remain, either filing individual national applications in each desired country or filing a single application in the EPO and validating the patent in the desired countries (or an EPO “bundled” patent). The third and new option is the UP. And with the UP, the UPC will have exclusive jurisdiction for enforcement and validity challenges.
Beginning March 1, 2023, a “sunrise” period begins in which applicants can “opt-out” of the jurisdiction of the UPC, request delays of grant decisions, and file requests for UPs in advance of the effective date of the UPCA. On June 1, 2023, the UPCA comes into full effect. Notably, there will be no changes during prosecution of a patent application in the EPO. Further, applicants will be able to select botha UP as well as a bundled patent, and this request must be made within one month of the date of grant. However, if an applicant chooses the bundled patent route only, the bundled patent cannot later be converted into a UP.
What Are the Fees Associated with a Unitary Patent?
And what about the fees for a UP versus traditional routes for European patent protection? In general, the fees for a UP have been structured to be about four times the average renewal fee for a single country. Thus, if an applicant typically validates in three countries or less, the fees will be lower to choose the traditional routes. There are plethora of online calculators for applicants to compare fees, and one of our favorites can be found here.
Will All European Patents Fall Under UPC Jurisdiction?
For some period of time, the UPC will remain an unknown in the calculus for a European patent strategy. Will the UPC be patent owner friendly, or will the UPC be more like the initially dubbed “death squad” of the USPTO Patent Trial and Appeal Board (PTAB)? In general, the UPC has jurisdiction to decide on UPs as well as bundled European patents. All European patents will automatically fall under UPC jurisdiction unless the applicant opts-out, and oppositions can be filed in the EPO or in the UPC. However, the UPC is expected to be much more expensive than the EPO for oppositions. It remains to be seen how the UPC will compare with the EPO, and thus a “wait and see” strategy might be best for the time being.
Eventually, all European patents will fall under the jurisdiction of the UPC. The opt-out provision is only available for the first seven years but is extendable up to 14 years. During this time period, an applicant can withdraw an opt-out; however, only one withdrawal is allowed, i.e., cannot opt-out a second time. After this time period, the UPC will have exclusive jurisdiction over all patents granted by the EPO.
What Considerations Should Patent Owners Make in Light of the UPCA?
With the arrival of the UPCA, there are some key takeaways that patent owners should carefully consider when deciding on a filing strategy in Europe. First, be aware of EU member states and participating member states, as well as non-EU member states. Second, use the available cost calculators to determine which route(s) will provide the most cost-effective patent strategy. Third, be patient, and wait to see how the UPC will decide cases before jumping ship right away to this new venue.
Overall, the UPCA is a win for patent owners because an additional option will be available to hone patent strategies in Europe.
By Kelly Burris