
David D. Hsu, Ph.D. / 徐大为,博士
Associate
Written by David D. Hsu, Ph.D.
Europe is scheduled to implement its Unified Patent Court (UPC) and Unitary Patent (UP) on June 1, 2023. The Unified Patent Court is a new, multinational court system that will have sole jurisdiction over patent infringement and enforceability of Unitary Patents and may have jurisdiction over existing European patents that have been validated in participating countries. The countries participating in the UPC include France, Germany, the Netherlands, and 14 other countries. The United Kingdom and Spain are not participating in the UPC.
The Unitary Patent is a single patent that covers all countries participating in the UPC. The UP is distinct from the “classic” European (EP) patent, which is a single granted patent application that can be individually validated in 39 countries and five validation and extension countries. Upcoming key dates for the UPC/UP include:
Patent owners and applicants in EPO will need to do the following:
1. Whether to opt out of the jurisdiction of the UPC
European patent applications and patents can be opted out of UPC jurisdiction during the sunrise period of March 1, 2023 to May 31, 2023. Thereafter, European applications and patents can be opted out if no action regarding the patent has been brought at the UPC.
The following are important considerations for whether to opt out of the UPC:
Initially opting out of the UPC system provides the most flexibility to patent owners. Patent owners should consider the advantages of initially opting out of the UPC system. European law firms expect many requests for opting out of the UPC. Thus, patent owners should decide on opting out EP patents sooner rather than later.
2. Whether to obtain a Unitary Patent
In the near future, patent applicants will have two options for patent protection in UPC member countries: a “classic” European patent that is validated in individual countries or a Unitary Patent that provides a single validation covering all UPC member countries.
Whether to obtain a Unitary Patent depends on several factors, including costs for validating in individual countries, renewal fees in individual countries, and risks/benefits of being under the jurisdiction of the UPC. The decision, therefore, depends on the individual patent applicant and the individual patent.
A patent applicant may want to consider the following:
All EP applications that have not yet been granted can now have their grant officially delayed until June 1, 2023, so that UPs can be obtained.
Conclusion
There is no universal answer to whether a patent applicant should pursue a Unitary Patent. A Unitary Patent may lower validation and renewal fees when pursuing a patent in several Unified Patent Court countries. A UP may be advantageous when bringing enforcement actions against an infringer in multiple countries. However, a UP is at risk of being revoked in all 17 countries with a single UPC action.
For existing EP patents, a patent owner may wish to opt out of the UPC system because opting out may provide the most flexibility. An EP patent can be opted into the UPC after initially being opted out, provided no national court action has been initiated.
If you have European patents or pending applications, please reach out to a Kilpatrick Townsend attorney to discuss this new system and to determine the best path for protecting your intellectual property.
Related People
David D. Hsu, Ph.D.
Counsel
Denver, CO
t 303.607.3298
dhsu@kilpatricktownsend.com
Associate