EUROPEAN PATENT WITH UNITARY EFFECT (EPUE)
AND UNIFIED PATENT COURT (UPC) FREQUENTLY
ASKED QUESTIONS (FAQS)
What options will be available for patent protection in Europe when the EPUE comes
into effect?
-
EPUE
Classical (non-unitary) EP patent
National patents
What are the advantages of the EPUE?
-
Centralised examination and grant at the European Patent Office (EPO)
Covers all of the European Union (EU), except Spain, Poland and Croatia
Must be litigated in the UPC and so has all of the advantages discussed below
Reduced translation burden (one translation of the entire text) compared
with a classical European EP covering all EU member states
A renewal fee rate of the equivalent of four states
Potential for single licence and royalty covering the majority of EU states
What are the disadvantages of the EPUE?
-
Does not cover the non-EU states which may be covered using a classical EP
patent, such as Switzerland, Norway and Turkey
Loss of flexibility concerning which states may be maintained during the life
of the patent (“all or nothing”)
Must be litigated in the UPC and so has all of the disadvantages discussed
below
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-
Increased translation burden (one translation of the entire text) compared
with a classical EP patent validated in the UK, France and Germany only
Potential for increased renewal fee burden
What are the advantages of the classical European patent?
-
Can pick and choose in which states to make the patent effective
No additional translation burden if certain states are chosen (such as the UK,
France and Germany only) because of the London Agreement
Can choose fewer than four states and hence fewer than four renewal fees
Flexibility concerning the number of states in which the patent is maintained
during its life
Can opt out of the UPC during the transitional period and so may avoid the
disadvantages discussed below
Can opt in to the UPC at any time and so may obtain the advantages discussed
below
What are the disadvantages of the classical European patent?
-
Additional translation burden if certain states are chosen, such as Italy and
Sweden
Increased administration during validation
Number of renewal fees is dependent on the number of states covered and is
not capped at four
Potential for complicated licencing and multiple royalties
What are the advantages of a National patent?
-
Can cover any state
Translation burden depends on the state chosen
Prosecution can be quick and inexpensive
The UPC is not competent and so may avoid the disadvantages discussed
below
What are the disadvantages of a National patent?
-
The choice of in which states to proceed needs to be made earlier
Potential for increased prosecution costs
Lack of centralised examination
Potential for different claims in different states
Some European states cannot be pursued nationally via the PCT, such as
France
Must litigate each patent separately in each state – can be costly
The UPC is not competent and so cannot obtain the advantages discussed
below
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3
What is the application procedure for an EPUE?
-
An EPUE is derived from a standard European application prosecuted at the
European Patent Office (EPO)
Once the EPUE system has come into effect, it will be possible to choose
whether a European application becomes an EPUE or a classical EP patent
This means that the choice will have to be made in relation to currently
pending applications which are not granted until after the EPUE comes into
effect
How do I cover the participating EU states and the other non-participating European
Patent Convention (EPC) contracting states?
-
A European application can be converted into an EPUE and at the same time
validated in:
-
those states which are EPC-contracting states, but not members of the
EU, such as Switzerland, Norway and Turkey; and
those states which are members of the EU, but not currently
participating in the EPUE system, such as Spain, Poland and Croatia
When do I have to decide if a European application becomes an EPUE and/or classical
EP patent?
-
By one month after the grant of the application
When will the EPUE come into effect?
-
On 1st day of 4th month after 13th ratification of the UPC agreement,
including ratification by the UK, France and Germany
Expected to be in late 2016 or in 2017
Where will the EPUE be litigated?
-
The EPUE must be litigated at the UPC
What is an opt out?
-
This is an opportunity to take a classical EP patent out of the competence of
the UPC
If an opt out is filed, the classical EP patent will be subject only to the
jurisdiction of the national courts of the states in which it is validated
Only one opt out needs to be filed for each classical European patent and it
applies to all of the states in which the patent is validated
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What happens if I do nothing?
-
The UPC has non-exclusive jurisdiction for the classical EP patent for the UPC
countries, i.e. the bundle of national patents comprising a classical EP patent
may be litigated at the UPC
When can an opt out be filed?
-
At any time unless an action in respect of the classical EP patent has been
brought before the UPC
For existing EP patents, it will likely be possible to opt out in a “sunrise”
period of six months before the UPC comes into effect
For EP applications granted after the UPC comes into effect, opt outs
registered during examination of the application will apply to the resulting
patent
Will it always be possible to opt out?
-
After the UPC comes into effect opt outs can only be filed during a
transitional period of 7 years (which might be extended to 14 years)
All classical EP patents granted after the transitional period must be litigated
at the UPC
When can an opt out not be filed?
-
After an action had been brought before the UPC
After a first opt out has been withdrawn (i.e. after you have opted back in)
When can an opt out be withdrawn?
-
At any time unless an action in respect of the classical EP patent has been
brought in a national court
Is there an opt out fee?
-
The current proposal is for an opt out official fee of 80 Euros
The fee applies to opting out and withdrawing the opt out
Who has to file the opt out?
-
The applicant or proprietor or, in the instance of joint applicants/proprietor,
all of the applicants/proprietors in common
How long does an opt out last?
-
The opt out lasts for the life of the patent or until the opt out is withdrawn
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What are the advantages of the UPC/reasons not to opt out?
-
Possibility of central enforcement across all UPC states in a central action
Possibility of a multiple-state injunction
Lower costs compared with multiple actions in different national courts
Recoverable costs (i.e. the loser pays) may discourage weak infringement
defences and may encourage settlement
Possibility of forum shopping if infringement in multiple states
Possibility of finding of infringement and subsequent injunction prior to
determination of validity
Possibility for harmonised jurisprudence
Central division and appeal court might attract top European judges
Expensive to opt out lots of patents
Once opted out, a third party might bring an action in a national court and
prevent you from opting back in
Possibility for EPO prosecution team to handle UPC litigation
Possibility to gain expertise in the system and potentially to influence its
development
What are the disadvantages of the UPC/reasons to opt out?
-
Untried and untested
Possibility of central revocation/limitation across all UPC states in a single
action
Possibility of bifurcation, i.e. infringement and validity considered separately
Possibility of infringement and validity being considered in different
languages
Possibility of referrals to the Court of Justice of the EU (CJEU)
Potential lack of suitable judges
The actual cost is unknown
Can opt (back) in once the UPC has been tested and costs are clear
If not opted out, a third party might bring an action in the UPC and prevent
you from opting out
What is the impact of the EPUE, UPC and opt out now?
-
Need to decide whether to obtain EPUEs
Need to consider whether to opt classical EP patents out of the UPC
Will need to make a separate decision for each EP patent/application
Need to assess opt out costs for existing portfolios
Need to assess balance between convenience of central enforcement and risk
of central validity attack
Could influence licence negotiations: a strong patent enforceable everywhere
at once might be seen as more valuable, but a weak patent subject to central
attack might be seen as less valuable
Currently unclear whether exclusive licensees have the right to opt in or out
and license agreements will need to clarify this
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6
What are the key considerations when deciding whether or not to obtain an EPUE or
to opt out?
-
Two main factors: (1) commercial importance of patent and (2) strength of
patent (likelihood of validity)
The more commercially important a patent, the more reasonable it becomes
to opt out and invest in enforcing it across many states
The stronger a patent (and hence the more likely to survive a revocation
action), the more reasonable to try the UPC
22 September 2015
© J A Kemp
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