Should I go for it?
The new Unitary Patent (UP) and Unified Patent Court (UPC) system comes into effect after decades of debate. The original main goals of saving costs – mainly translation costs – when compared to validating classical EP patents in a greater number of countries on the one hand, and easy enforcement in all EU countries with a single court action on the other hand, have somewhat faded in the background : (i) by means of the London Agreement from 2008, translation costs were drastically reduced, at least for applicants going just for core countries such as Germany, France and Great Britain; (ii) with Brexit, the United Kingdom (UK), one of the former core countries specifically with respect to enforcement, is out of this system. Additionally, Spain, Poland and Croatia decided to not participate in the new system.
What remains is a system allowing cost-effective coverage of 24 EU countries (once all such countries have completed all necessary formal steps) with a single UP and efficient enforcement in all such countries by a single court action.
Those applicants who were using a three country policy in the past (DE, FR, UK) will now have additional cost burden per patent if switching to the UP route instead (one additional full translation + slightly higher resultant annuity fees).
Those applicants who favored a larger number of countries or all countries (e.g., chemistry, pharmaceuticals, important patents) in the past, will greatly benefit cost-wise, particularly with regard to annuity fees and translation/validation costs. Moreover, such applicants may appreciate the possibility to go against an infringer in several countries by means of a single court action.
On the negative side, the risk of losing the UP by means of a single revocation action, and thus coverage in 24 countries at once, is a serious threat for any successful licensing program or proprietors who decide against licensing.
On the one hand, annuity payment is greatly simplified as payments no longer need to go to a number of different national authorities. On the other hand, the annuity payment is less flexible as the possibility to reduce the future costs by cutting certain number of countries will cease.
Those applicants who have difficulties deciding which side to favor may continue in regard to new grants with classical EP patents until more experience with the new system exists. Hereby, they may either completely avoid the new system by declaring opt-out, or keep the possibility to play on both sides within the 7-year transitional period by not declaring opt-out. They may still declare opt-out anytime during the transitional period, provided no UPC court action is initiated in the meantime.
|One stop enforcement||Risk of one stop revocation at the UPC|
|Cost effective coverage of all UPC countries||Cost increase compared to three country (e.g., DE, FR, UK) validation policy|
|Simplified renewal administration in relation to UPC countries||Lack of flexibility to slim down renewal fee payments and coverage over the life time of the patent|
|Enhanced predictability of court decisions in respect to countries traditionally not in the spotlight of litigation||UPC is still an unkown territory in terms of quality, speed and costs|
For existing EP patents, the proprietors may still declare opt-out within the sunrise period, especially since an opt-in declaration is possible within the transitional period, provided that no national court action is initiated in the meantime.
Those proprietors of granted EP patents who wish to declare opt-out during the sunrise period should inform us as soon as possible. In particular, the opt-out needs to be declared on behalf of the material (true) owner of the patent (which may not necessarily be the registered owner). Hence, there might be some preparation time needed to request opt-out in the name of the correct owner. Such opportunity may also be used to update/correct the national registers accordingly, although this is not mandatory.
Those applicants who wish to take advantage of the new system as soon as possible should take account of a recent notification from the EPO, according to which a request to delay the decision for grant may be submitted from the date of deposit of Germany´s ratification of the Agreement on a Unified Patent Court (UPCA). This will enable applicants who have already received a communication pursuant to Rule 71(3) EPC to request a delay of the decision for grant until the date the UPCA will finally enter into force 3-4 month afterwards, thereby enabling those applicants to achieve an issuance of a Unitary Patent instead of just a classical EP patent.
Those applicants who are interested in such a procedure are invited to contact us immediately, as currently issued communications pursuant to Rule 71(3) EPC may possibly be further delayed to avoid a decision for grant prior to the time the mentioned request for delay of the decision for grant may officially be furnished.