The European Union unites dozens of countries under a single set of political and economic goals. However, one element of the European economy has long been fragmented: intellectual property. An entity looking to secure patent protection across Europe can either apply for patents in each country or use the European patent to apply for a patent in each member state. However, each of these patents must be maintained, enforced, and challenged separately. This means that if your patent is infringed in, for example, France, Italy, and the Netherlands by a single product or company, you must take legal action in three national courts. The resources required to litigate are multiplied and each court may not reach the same conclusion.
The new Unitary Patent (UP), which will be protected and challenged in the Unified Patent Court (UPC), aims to mitigate the frustrations of the current system. The UP designation can be added to any granted European patent once the Court comes to fruition. This will allow organizations to maintain, enforce, and challenge intellectual property across the UPC’s member states (which must be part of the European Union) with a single patent. There are currently 17 participating countries, called Contracting Member States. There may be up to 25. The Unified Patent Court’s decisions regarding infringement and validity will apply to all member states. Existing European patents will automatically fall under the UPC in member states.
The UPC is designed to be a simpler, more cost-effective approach to patent maintenance and litigation. There will be a transition period of at least seven years affecting translation requirements. Current patent holders will also have the ability to opt out of the UPC in favor of national courts during this period—as long as the opt out is completed before any actions are brought against the patent in the UPC. After this period, “the only way to avoid the UPC will be to file separate applications at the national patent offices.”
4 Questions to Ask Your Organization
As the Unitary Patent and Unified Patent Court come to fruition, businesses will need to reexamine their European patent strategies. Consider these questions before filing for Unitary Patents!
How many Contracting Member States do you really need patent protection in? Does it make sense to file in these countries individually, or should you use the Unitary Patent for unified protection? One of the benefits of the UPC is a single maintenance fee; however, that fee only represents cost savings if you were to maintain in more than four member states. Is there any reason you may want patents across member countries now, but won’t want to maintain your patent in all of them later on? You cannot let your patent expire in some member states but not others; maintaining under the UPC is “all or nothing.”
Is the lack of case law and other unknowns especially concerning? This is likely a concern for many organizations. There are decades of case law in national courts that can help businesses patent and litigate strategically. The UPC is an unknown, which no business leader likes. One potential benefit of opting to use the UPC is its commitment to speed. The Rules of Procedure promise that “court actions are intended to result in a decision at first instance, within 14 months from the initiation of proceedings.”
Do you want to litigate in national courts rather than the UPC? If the answer is yes, opting existing patents out of the UPC and filing new patent applications directly with national patent offices can be considered. This may be a valid strategy for narrow or potentially weak patent claims that may be invalidated. Separate filings and litigation will prevent the patent from being invalidated in all member states simultaneously.
If maintenance and litigation costs fall as predicted, how might your organization use those funds? Of course, for many organizations the answer will be smaller budgets. However, consider making a strong case for how those savings could be applied to other pieces of your patent strategy.