UPC has Green Light
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To UPC or not to UPC? No longer ..... UPC has green light.
Image credit: abluecup
With the news that Germany has now ratified the UPC Agreement, the European Union’s (EU) new Unitary Patent and its Unified Patent Court (UPC) will start on 1 June 2023.
The new scheme adds the option to choose a single ‘Unitary Patent’ in EU Member States signed up at the time of EP grant, in the same way you might validate an EP patent in individual countries to obtain a bundle of EP patents.
Therefore, upon EP grant, patentees will have an additional choice of electing an EP patent with unitary effect known as a Unitary Patent.
Although separate, the EU and the European Patent Office (EPO) are working together on this new venture. Once an EP application is granted an EU Unitary Patent can be elected by a request filed at the EPO. The EPO’s patent granting process is unaffected. The EPO will also keep the Unitary Patent Register.
As you get your head around this complex, potentially useful monster, here are some practical points:
- A request for a Unitary Patent is due within 1 month of EP grant
- If in English, a full translation into an EU language is also required
- Unitary Patent renewal fees start from €35 and rise to €4855 in year 20
- If selecting 3 or fewer states for EP validation, renewal costs for a Unitary Patent are likely to be more over 20 years
- If selecting 4 or more states the Unitary Patent renewal costs are likely to be cheaper over 20 years
- EU countries cannot be dropped (it is a unitary right, all in or all out)
- If a UP is litigated, this will be in a single court, the EU’s Unified Patent Court
- All EP patents, no matter when granted, and all pending and new EP published applications will be subject to the exclusive jurisdiction of the EU’s Unified Patent Court unless opted out
- Opt-outs to the exclusive jurisdiction of the UPC for EP patents can be filed in the 3-month sunrise period running up to the start of the UPC – so starting 1 March 2023, for the next seven years
- The New Unitary Patent System:
Short Term Transitional Arrangements to Consider Now
In the 3 months leading up to the UPC, the EPO will accept pre-grant:
- a request for a delay in issuing the decision to grant a European patent, to allow the UPC to come into force
- an early separate request for unitary effect of the European patent
These options are only available if a R71(3) communication has been issued and the text has not yet been approved by the applicant.
Other Options: Creation of a delay
If a Rule 71(3) Notification of Intention to Grant is received, a response could be filed which disapproves the text with amendments to create a delay. A new Rule 71(3) should then be issued setting a new four-month deadline to respond.
Or an EP application could also be allowed to lapse and reinstated as of right.
To UPC or not to UPC? The decision points are fast approaching like a monster rising from the depths of Loch Ness.
The team at Capella IP are here to make your job easier. Get in touch for more information.
This brief guide is intended as an introduction to the UPC and not legal advice. For your particular circumstances, and legal advice, please get in touch.
