We are witnessing the biggest revolution in European patent law since its inception. When in 1973 the European Patent Office was established in Munich, it became possible to obtain, in a single procedure, a patent for an invention which today, years later, can be simultaneously protected in 38 countries, including all the Member States of the European Union. However, obtaining a patent is often only half of the story, as the exclusive right must then be effectively exercised. For this purpose, a Unified Patent Court is created – the first international court in the history of the world which have jurisdiction to settle disputes between private law entities.
Currently functioning international courts (e.g. CJEU or European Court of Human Rights) have always decided in disputes in which at least one party to the trial was a state or an international institution. The phenomenon of the Unified Patent Court (UPC) will consist in the fact that the same parties to the proceedings which appear in national courts for patent infringements (patent holder and infringer) shall meet in this court. This means that UPC will settle patent disputes just like national courts, although its judgement will be legally binding in all 17 countries that have joined this system. However, this seems to be only the beginning, because UPC may become in time a patent court competent for all Member States of the European Union.
Unified Patent Court will settle disputes concerning European patents and European patents with unitary effect. The latter will also be granted by the European Patent Office, although in order for them to be valid, no validation procedure before national patent offices shall be necessary. Therefore, an exclusive right of a unitary nature is created, which is automatically valid in all countries participating in the UPC system.
Opportunities and risks associated with the unitary patent and UPC
The introduction of a European patent with unitary effect and the Unified Patent Court bring new opportunities and perspectives for actions for the patent holders, but also real business risks. The new system changes the “rules of the game” that have been in place so far in patent disputes which often were handled in relation to the same European patent at the same time in different countries. Therefore, there is a need for a new look at the strategies of business activities in this area: both taking the perspective of choosing the scope of protection of European patents (the ordinary one or the one with unitary effect) and avoiding the threats associated with their infringement. The unitary nature of the European patent means that, in the event of a dispute, patent holders may lose protection in the territory of many countries at one time. On the other hand, for those potentially infringing such a patent, the risk of losing a legal battle before UPC may also lead to the loss of several outlet markets for the contested product.
Taking the above into account, as of now we want to strategically prepare our clients to take advantage of the opportunities arising to avoid most of the risks associated with the emergence of a new European patent protection system.
Awaiting the new patent protection system in Europe
As a leading patent law firm in Poland, we start offering specialized legal and technical services related to the establishment of the Unified Patent Court.
We already recommend to all interested entities who are active before the European Patent Office and whose patent applications are entering the last stage of the proceedings to review the portfolio of pending proceedings.
Two transitional procedures launched by EPO the request for patent with unitary effect and the postponement of publication, shall allow the applicants to decide on the future of the European patent granted.
However, the time to take action in this respect will be very limited and will start once Germany has submitted its ratification instrument concerning UPC. Hence, proper preparation already at this stage requires a strategic approach.
As the circumstances related to the implementation of the new system change, the scope and nature of the services offered by JWP will expand to ultimately include:
- registration proceedings concerning patent applications filed in the European Patent Office (EPO) in order to obtain a European patent with unitary effect
- payment of renewal fees for the European patents with unitary effect
- monitoring deadlines for payment of official fees
- making entries and changes in the EPO register of unitary patent protection, including the processing of opt-out applications related to already granted European patents
- analysis of similarities of technical features of a disputed solution with the one protected by the European patent or by the European patent with unitary effect
- cooperation with foreign attorneys in the scope of issuing opinions on the risk of infringement of the European patent or the European patent with unitary effect
- coordination of proceedings pending before the Unified Patent Court in cooperation with foreign attorneys in matters concerning the protection of European patents and European patents with unitary effect
- conducting mediation and negotiations on matters related to inventions protected by the European patent or the European patent with unitary effect
- comprehensive legal and technical consultancy related to the protection of inventions covered by the European patent with unitary effect
- conducting trainings and workshops for clients on the strategy in proceedings before the Unified Patent Court, especially in the context of conducting cross-border business activity
Countries participating in the UPC system:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden (highlighted in green)
The Central Division of the Unified Patent Court (UPC) Court of Appeal of the UPC
Expected 3rd seat of the central division of the UPC Patent Mediation and Arbitration Centre