Unitary Patent and the Unified Patent Court (UPC)

Currently there is no single European Patent (EP), the current format for a European Patent being a “bundle” of rights which must be validated in each country. These rights must also be litigated separately in the national courts of each country.

The Unitary Patent will provide an opportunity to have a single patent which will protect your invention in a number of European countries and be able to defend your patent and prosecute in the Unified Patent Court with a single court action.

What affect does Brexit have on the Unitary Patent?

The UPC Agreement is separate to the European Union (EU) and therefore the UK leaving the EU has not derailed the decision for the UK to ratify the UPC Agreement. London (Aldgate Tower) will also hold one of the centralised UPC courts alongside Paris and Munich.

Will my EP Patent automatically become a Unitary Patent?

Yes. If you do not “opt-out” then your EP Patent will automatically become a Unitary Patent. However there will be a 3 month “sunrise period” ahead of the UPC coming into force, and a further 7 year transition period where opt-out is possible.

How do I opt-out and opt-in?

You can opt-out as long as no action has been pending before the UPC. The sunrise period available before the UPC comes into force allows you to opt-out before it is possible for anyone to bring a centralised action against you. A further 7 year transition period will be available where you can opt-out after the UPC has come into force if no action has been started in a centralised court. There are no official fees to opt-out.

If you do not opt-out, your EP Patent will become a Unified Patent when the UPC becomes live. If you followed the process to opt-out but then decide a Unified Patent would be advantageous to you there is a procedure to withdraw your opt-out (opt-in). This has no official fees and can only be done if there has been no action at any time in a national court. It is important to note that you can only opt-out once.

What are the advantages and disadvantages to having a Unitary Patent?

With the UPC you can prosecute in a centralised court, paying only once instead of having to bring it to a number of different national courts. However you would also defend your patent in a centralised court and if rights were lost, they would be lost in all countries. The Unitary Patent would be all or nothing across the countries who have signed up to the agreement.

Not all countries have signed up, for example Spain is not part of the Agreement so if you wanted protection in Spain as well as a Unitary Patent, you would have to consider separate patent protection.

In terms of costs, it is expected to be less expensive to have a Unitary Patent. The Unitary Patent and UPC avoid multiple court actions and therefore multiple court fees in different national jurisdictions. Also renewal costs are expected to be less in comparison to an EP Patent designating 5 or more countries.

What timescales are we looking at for implementation?

The “sunrise period” is likely to begin early 2018 with the UPC coming into force in Summer 2018, followed by a 7 year transition period. Exact dates are still to be announced, but now is a good time to start thinking about any EP Patents you currently hold and asking any questions you may have about the process.

Which Countries are included?

The 25 states who have currently signed the Agreement are as follows, note some European countries are not in this list:

Austria

Belgium

Bulgaria

Cyprus

Czech Republic

Denmark

Estonia

Finland

France

Germany

Greece

Hungary

Ireland

Italy

Latvia

Lithuania

Luxembourg

Malta

Netherlands

Portugal

Romania

Slovakia

Slovenia

Sweden

United Kingdom

What are the likely fees?

A single Unitary Patent means that there will be a single renewal fee instead of a fee per country. This is likely to be equivalent to the current renewal fee for an EP Patent designating Germany, UK, France and The Netherlands for its lifetime.

As a guide for court fees, a basic Infringement action will be €11,000 with value based fees of €0 to €325,000. Revocation action will be €20,000, a fixed price. Recoverable costs will be from €38,000 to €2,000,000. Micro and Small Entities may be entitled to a 40% discount on the court fees.

Where can I get more information?

More information can be found via the following links or by getting in contact with Nigel Brooks CPA directly:

If you have any questions about this post, or Intellectual Property in general, please do not hesitate to contact the office.

Nigel Brooks CPA

office@nbpat.co.uk

01730 823 647