The Unitary Patent and the Unified Patent Court are new building blocks that will supplement and strengthen the existing centralized European patent granting and enforcement system. In short, they will offer users of the patent system a more predictable, coherent and cost-effective option for patent protection and dispute resolution across Europe.
Unitary Patents will make it possible to get patent protection in up to 25 EU Member States by submitting a single request to the EPO, making the procedure simpler and more cost effective for both new and existing applicants.
The Unitary Patent system is expected to start on June 1, 2023, as reflected on the UPC’s website (https://www.unified-patent-court.org). This means that the Agreement will enter into force, and that the EU Regulations setting up the Unitary Patent will apply. This also means that a collateral legal framework for the Unitary Patent will also enter into force, in particular, the Rules relating to Unitary Patent Protection, which formally entrust the EPO with the administration of the Unitary Patent.
With a view to supporting users in an early uptake of the Unitary Patent, the EPO has introduced transitional measures applicable to European patent applications having reached the final phase of the grant procedure. These measures became available ahead of the entry into force of the Unitary Patent system as of January 1, 2023.
European patent practice has never been for the faint at heart, and can be both very complicated and expensive. U.S. applicants considering application for a Unitary Patent should therefore consult a U.S. practitioner well-versed in international patent law to fully explore the client’s business goals so that a strategy can be developed that strikes a balance between costs and business advantage. Referral to a European practitioner will also be required, and U.S. practitioners with significant European experience can also help guide that key selection.
Why was the Unified Patent Court Needed?
Separate though interrelated by design, the Unified Patent Court (UPC) is an international court set up by participating EU Member States to deal primarily with the infringement and validity of both Unitary Patents and European patents, thereby hopefully putting an end to costly parallel litigation, and greatly enhancing legal certainty across Europe.
With reference to the UPC website, the stated aims of the new Court more broadly are to:
- establish an effective forum for enforcing and challenging patents in Europe;
- end the need for litigation in multiple countries;
- enhance legal certainty through harmonized case law in the area of patent infringement and validity;
- provide simpler, quicker and more efficient judicial procedures; and
- harmonize substantive patent law relating to the scope and limitations of the rights conferred, as well as the remedies in cases of infringement.
The new Court will be empowered to handle disputes concerning both the new Unitary Patent System and original European Patent Office patents.
Specialized Patent Court with Exclusive Jurisdiction
Currently, national courts and authorities decide on the infringement and validity of European patents. In practice, this can lead to great difficulties when a patent proprietor wishes to enforce a European patent in several countries, or when a third party seeks the revocation of a European patent. Litigation in multiple countries is extremely expensive, and there is always the risk of diverging decisions and a lack of legal certainty. Forum shopping is often inevitable, as parties seek to take advantage of differences between national courts and their procedures.
The UPC Agreement addresses these shortcomings by creating a specialized patent court with exclusive jurisdiction for litigation relating to Unitary Patents and European patents and harmonizing the scope and limitations of the rights conferred by a patent, as well as the remedies available after issuance (see EU Directive 2004/48/EC (Enforcement Directive).
Since the Court is still in a nascent stage, the rules of the road are not yet fully developed, much less known and understood. But as the world grows smaller and ever more interconnected while patent laws appear ever expanding, great change is coming very quickly for many in the business world, and the UPC treaty appears to be a step in the right direction.
About Ray Ferrera: Ray Ferrera is a U.S. Patent Attorney and serves as the team leader of Adams and Reese’s Patent Team. Practicing in IP for close to 30 years, Ray advises clients on how best to protect, manage, and monetize international IP rights. He has obtained numerous multimillion-dollar results for clients around the world in a wide variety of patent, trademark, copyright, trade secret, and other IP matters. He has established and enforced IP rights in over 100 countries and has experience acquiring and enforcing IP assets throughout North and South America, Europe, Africa, Asia, and the Middle East. In addition to practicing in patent matters before the U.S. Patent and Trademark Office and before the International Trade Commission, Ray has experience in IP litigation under the Brussels Convention in Europe, and before the European Patent Office in patent hearings and appeals.