Unified Patent Court (UPC) – Application Strategy

The Unified Patent Court (UPC) has been many decades in the making and tomes have been written about the strategies it opens and how to benefit from it. This is the first of a few short articles providing a summary of the key points and highlighting the aspects everyone needs to think about in a digestible form. The focus is on the parts of the procedure led by patent attorneys, rather than litigation strategies.

The UPC Agreement creates a new Court which is able hear cases regarding European patents, and a new IP right in the form of the Unitary Patent available after grant by the EPO. The agreements do not therefore directly affect the filing and prosecution stages, but may have an indirect effect as applicants try to optimise their post-grant strategies.

Jurisdiction of the UPC

The UPC will have (initially shared) jurisdiction over patent disputes in UPC member states relating to patents granted by the EPO. This is a cause of concern for some applicants due to the possibility of a central attack leading to revocation or amendment of a patent in all UPC member states by a single decision. The default position is that all European patent applications and patents will be subject to the jurisdiction of the UPC when it comes into effect. However, that jurisdiction is shared with existing national Courts.

If Patentees are concerned about being subject to the UPC during a transitional period applicants can opt-out of the Court’s jurisdiction, a process we will cover in a subsequent article. However, after the transitional period (at least 7 years), opt-out will not be possible and the Court will have sole jurisdiction for patents granted by the EPO.

Effect on prosecution strategies

In theory, applicants could choose to file individual national applications to obtain national patents which are not subject to the UPC’s jurisdiction, rather than filing at the EPO. However, this is unlikely to be a very attractive route in all but the most extreme cases. Our experience shows that, at best, applications can be filed and prosecuted in the UK, France, and Germany for the cost of an EPO application, but in most cases only the UK and Germany can be obtained for that cost. Adding further countries clearly adds expense and therefore the national route will be much more expensive. Added to the cost is the extra administrative burden of managing individual applications, as well as the required translations. Without a very great need to avoid the UPC, such a strategy is not attractive.

We therefore expect that in most cases applicants will continue to file at the EPO, and if there is concern, utilise the opt-out option. It is hoped that the Court will quickly be seen as a safe pair of hand sand there will be little need to avoid it.
When Germany deposits its instrument of ratification (which triggers the final countdown to the UPC opening) the EPO will introduce two new provisions applicable before grant. These provisions are intended to allow applicants to make early use of the Unitary Patent.

The first provision will allow early requests for a Unitary Patent, before grant, whereas normally the request can only be filed after grant. This will allow Unitary Patents to commence on the day the Agreement enter force. An early request will be able to be filed after a notice of intention to grant has been issued by the EPO. The Unitary Patent will then take effect on the grant date (assuming that grant date is after the agreements enter force).

Since a Unitary Patent is only available if the grant date is after the Agreement enter force, the second provision allows applicants to delay grant to allow a Unitary Patent to be obtained. This request must be filed after a notice of intention to grant is issued, but before the text for grant is approved.

As well as these formal provisions it is of course possible for applicants to try to delay grant by requesting additional amendments, or requesting extensions, even before these provisions become available.

If applicants are considering using the Unitary Patent, they should therefore start thinking about which applications are getting close to grant and working with their attorneys to ensure they can take a Unitary Patent if desired.

Next week we will look at the Unitary Patent in more detail.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.