If your global patent portfolio has European coverage, let us direct your attention to upcoming major changes to the patent process in Europe and necessary actions you need to take in connection with these changes.
Current European Patent Process
The patent process in Europe has been relatively complex, partly due to Europe’s political and economic structure. For procurement, an applicant can file a national application with the national patent office of a specific European country to receive a national patent enforceable in that country. An applicant can also file a European application with the European Patent Office (EPO) of the European Patent Organization, of which approximately 40 European countries (including the U.K.) are member states[i]. While the applicant can rely on the EPO alone for examining the European application, when the European application issues into a European patent, the applicant needs to again deal with separate national patent offices. Specifically, the applicant is to validate and thereafter maintain the European patent independently in each European country of interest for the European patent to be enforceable in that country. The European patent then effectively operates as a bundle of one or more national patents. For enforcement, therefore, an applicant similarly is to litigate separately in each European country.
Changes to the European Patent Process
Changes to this patent process in Europe are coming via the intricately linked Unitary Patent (UP) System and Unified Patent Court (UPC). While the timeframe is not concrete yet, the UP System and the UPC may become applicable as early as the fall of 2022.
The UP System will implement the UP, for which the EPO centrally manages uniform patent protection in participating member states[ii], obviating the need to validate and maintain the European patent with national patent offices of the participating member states. A number of member states of the European Patent Organization, including the U.K., Switzerland, and Spain, are not participating in the UP system and therefore will not be covered by a UP. A UP can be litigated only in the UPC.
The UPC is an international court having exclusive competence to decide on infringement and validity of UPs. The UPC will appoint centrally trained, multi-national judges[iii]. The UPC will also have jurisdiction over classic European patents, unless the applicants have opted these patents out of the UPC during the transitional period, as further discussed below.
As can be seen, the UP/UPC will affect only European patents granted by the EPO, not national patents granted by national patent offices in Europe. After the UP/UPC become applicable, an applicant can choose whether a European application is to issue into a UP covering all the participating member states, or into a classic European patent validated in the countries of interest. For those countries of interest that are not participating member states, the applicant is to separately validate and maintain the European patent with the corresponding national patent offices even if the European patent is also to issue into a UP. A classic European patent issued anytime cannot be converted into a UP for centralized maintenance, but it will by default fall under the jurisdiction of the UPC for centralized enforcement and revocation.
The UP/UPC will offer a transitional period (initially of seven years), during which an applicant can opt a classic European patent out of the UPC. If the applicant does not opt the patent out of the UPC, the applicant will have a choice of litigation venue of either the UPC or the national courts. However, once anyone brings an action involving the patent using either court system, all operations involving the patent will be pinned in or out of the UPC accordingly. When the transitional period is over, every European patent (Unitary or classic) is to be litigated under the UPC.
Actions You Need to Take
Therefore, if you pursue patent protection in Europe,
Many factors affect each of these determinations. For the first determination, having a European patent fall under the jurisdiction of the UPC means the patent can be litigated in the UPC in addition to the national court during the transitional period and exclusively in the UPC after the transitional period. The UPC can be cost-effective for disputes covering multiple participating member states or cases with multinational implications, while the costs can be relatively high in comparison with costs in national courts[iv]. Decisions of the UPC will apply to multiple jurisdictions at once[v]. For the second determination, applying for a UP means that a full translation will be required during the transitional period, after which translations and associated fees will no longer be required. Applying for a UP also means that the renewal fees, which are approximately equal to those for the top-four validation states[vi], need to be paid only to the EPO instead of national patent offices, and that the patent will be litigated under the UPC. Therefore, there are pros and cons for either side of each of these determinations.
For a basic scenario, suppose that for your inventions, you typically apply for a European patent and validate the European patent in the U.K. and France for defensive purposes. For a European patent of yours that was already issued, it may be reasonable to opt it out of the UPC, since you may not benefit much from the UPC and may as well wait until the UPC is more tested. For a European application of yours that is to be issued into a patent soon after the UP/UPC become applicable, it may be helpful to keep it as a classic European patent instead of a UP, because you would have to validate the European patent in the U.K. separately, you will not save any cost from applying for a UP at this time, and you may not gain much from the UPC.
It is time to start reviewing your global patent portfolio and understanding the need to make certain determinations in response to the upcoming changes to the patent process in Europe. Every client may have a unique scenario, and we will help you make the determinations that are most appropriate for protecting your IP in Europe and globally.
Acknowledgement: We thank Tom Hamer and Emily Collins at Kilburn & Strode LLP for their insightful feedback .
[i] See https://www.epo.org/about-us/foundation/member-states.html, for example.
[ii] See https://www.epo.org/law-practice/unitary/unitary-patent.html#tab-2, for example.
[iii] See https://www.unified-patent-court.org/faq/upc-and-its-judges, for example.
[iv] See https://www.beckgreener.com/unified-patent-court-upc-0, for example, which indicates that the costs in the UPC could nevertheless be lower than in Germany.
[v] A national patent issued by a national patent office can be valid in addition to a UP in some jurisdictions, such as Germany. See https://www.hoffmanneitle.com/en/unified-patent-court-faq/, for example. Therefore, a patent revoked by the UPC, for example, may still be protected under the national patent.
[vi] The four jurisdictions are the U.K. (not a UPC member state), France, Germany, and Netherland.
Disclaimer: This article is purely a public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice and is for informational purposes only. The information is not intended to create, and receipt does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek legal counsel for individualized legal advice. For more information, please contact a firm attorney through www.hickmanbecker.com.
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