What to do to get ready for the Unitary Patent and UPC
19th December 2022
In 2020, the UK government decided to withdraw from the Unified Patent Court (UPC) and the UPC Agreement (UPCA), presenting consequences for applicants considering unitary patent protection and litigants considering the UPC forum. In this article, we discuss the implications of the UK’s withdrawal from the UP and from the UPC for applicants and litigants in the UK.
The UK’s withdrawal from the UPC
The UPC is a new court, which comprises a Court of First Instance (in turn consisting of Central, Local and Regional divisions), a Court of Appeal and a Registry. The Local and Regional courts will deal with infringement, including preliminary injunctions, while the Central Division Courts will handle revocation actions and declarations of non-infringement. Originally, one of the three Central Divisions was to be based in London, with the other two being based in Paris and Munich, but now discussions are underway as to where the third court will be based, with Milan or Amsterdam being the most probable candidates.
With a new court comes new procedures, rules, a blank slate in terms of patent case law, and a new board of UPC Judges. UK practitioners had been involved in the drafting of the Rules of Procedure, with those rules being predominantly derived from the UK Courts’ Rules of Procedure. Thus, while they have been formulated to incorporate a wide variety of legal practices available to patent litigants across Europe, the Rules contain core elements which are only standard in UK patent litigation - for instance, the UPC will be able to order the disclosure of documents and cross-examine experts and witnesses.
Before their withdrawal from the UPCA, UK Judges partook in the selection and training of the UPC Judges. Fortunately, under the UPCA, European Patent Attorneys who have appropriate qualifications, such as a European Patent Litigation Certificate, may act as representatives before the UPC. This provision means that all UK European patent attorneys having the necessary litigation qualification may represent parties before the UPC.
The UPC will eventually provide a single court for litigation of European patents across the majority of EU countries. UK businesses will still be open to litigation within the Unified Patent Court based on actions they undertake within the contracting EU countries if they infringe existing rights. However, with the UPC no longer having jurisdiction over the UK, there will be a continued need for UK patent litigation for both national and European (UK) patents which fall under the jurisdiction of the UK courts. Thus, for patents within the UPC system, in regards to infringement or validity issues in the UK, a parallel national case to the UPC case must be opened. While this may appear an inconvenience, on the other hand, this may provide some certainty for applicants who are wary of, for example, central revocation before the UPC. Despite the fact there is no existing case law, given the UK’s direction on the formulation of UPC Rules, it is likely the UPC will take heed of the approach adopted by the UK courts in such parallel cases and thus there may be some predictability in outcome.
The UK’s withdrawal from the UP
Alongside the UPC will come the new option of obtaining a “European patent with unitary effect”, or a Unitary Patent (UP). A UP is a single patent right covering multiple EU countries, and is under the exclusive jurisdiction of the UPC. The UK will not fall under the umbrella of protection offered by a UP. Nonetheless, it will still be possible to obtain protection in the UK via a national UK application or a European patent application filed at the EPO. The latter simply involves the usual process of validating the granted European patent in the UK. Further, UK companies and inventors will still be able to avail of UPs, as well as use the UPC.
Some may regard a UP as a less attractive option for patent protection. However, despite the UK’s withdrawal, there remains a huge market constituting Germany, France and Italy, to be reached by a unitary patent. Further, the UP system will still provide a harmonised European patent system – it offers a single, efficient procedure for obtaining patent protection in Europe, and establishes a centralised system of protection, as compared with the current tapestry of national systems. It also presents the potential for a substantial reduction in patenting costs (particularly those related to translations, filings, and renewals), and so has considerable value compared to national patents.
However, the Unitary Patent System is only financially beneficial to candidates seeking protection in many countries, and because the territorial scope of protection cannot be changed in later years, it is difficult to save costs if an applicant later decides they no longer want protection in certain member countries. The system also presents the risk of revocation in all the member states at once. Critically then, the UK’s withdrawal may provide a form of insurance for applicant’s availing of a UP and a UK national patent.
Compounded by the fact that separate patents will be required within the UK, the UK will play the prominent part that it has played for decades in cross-border European patent disputes.
Applicants and litigants are therefore recommended to select a representative with offices in the UK as well as the EU, so as to be well equipped to handle examination of UPs and litigation at the UPC, as well as the EPO and UK intellectual property office.
This article continues FRKelly's series on the upcoming Unitary Patent and Unified Patent Court. For more details, check out the following articles:
8. UPC Opt-Out
A fantastic article from our own Gearoid Moran! If you're interested in reading about the privacy implications of O… https://t.co/aLg28JUCVM
Office Junior | FRKelly https://t.co/uv2kdtQXe1 #jobs #frkelly
Interested in joining the FRKelly team? We're currently recruiting for a number of roles, including a European Pate… https://t.co/n31Kq0MOW8