Dec 27, 2022
Unified Patent Court Agreement (UPCA)
The Unified Patent Court Agreement (UPCA) system is a combination of the European Unitary Patent (UP) and the Unified Patent Court (UPC). Under the UPCA system, a European patent granted by the European Patent Office (EPO) is registered by filing an application under the European Patent Convention (EPC), and annuity payments are made in the countries that have ratified the UPCA (the 17 participating countries when the UPCA entered into force), resulting in a single right that extends to all participating countries (unitary effect). In addition, invalidity and infringement suits will also be consolidated in the Unified Patent Court, and all patent rights will be subject to the judgment of the Unified Patent Court.
During the transitional period of the Agreement on a Unified Patent Court, there is a provisional measure that allows applicants to choose either to use the current Classical European Patent system or the Agreement on a Unified Patent Court system.
Participating Countries in the Agreement on a Unified Patent Court
(1) Out of the 27 member states of the European Patent Organisation (EPO), the following 17 UPCA in force countries will participate at the time the UPCA agreement enters into force:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden
(2) Seven UPCA Signatory States that have signed the Unified Patent Court Agreement but have not ratified it and countries planning to join after the Unified Patent Court Agreement enters into force:
Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia
(3) Non-participating countries in the Unified Patent Court Agreement
a) Other EU-member states not participating in the Agreement on a Unified Patent Court Spain, Poland, Croatia (Croatia is considering joining the Agreement on a Unified Patent Court)
b) Non-EU countries (members of the European Patent Convention (EPC))
United Kingdom, Switzerland, Albania, Macedonia (former Yugoslavia), Iceland, Liechtenstein, Monaco, Norway, San Marino, Serbia, Turkey
Note:
(1) Participating countries can choose either the Unified Patent Court Agreement system or the conventional European patent system, however, this is limited to the opt-out period described below.
(2) and (3) countries can only use the conventional European patent system, which requires to go through validation, a procedure to validate a European patent in order to obtain a right in each country.
Source : The Unified Patent Court | Unified Patent Court (unified-patent-court.org)
UPCA Expected Timetable
March 1, 2023 – May 31, 2023 Sunrise Period
The Sunrise Period is the period from three months prior to the issuance of the agreement to the start of the agreement. It was originally scheduled to begin on January 1, 2023, but was postponed by two months to March 1, 2023, to allow access to the Case Management System (CMS) and enhance the Sunrise Certification function.
June 1, 2023 Unified Patent Court Agreement (UPCA) enters into force.
Operation of the Unitary Patent and Unified Patent Court will begin.
June 1, 2023 – May 31, 2030 Unified Patent Court Agreement (UPCA) Transitional Period 7 years after the entry into force of the UPCA, or up to 14 years after the entry into force of the UPCA if the term is extended. If the transition period is extended, the maximum period will be until May 31, 2037. The extended period will be reviewed five years after entry into force.
March 1, 2023 – April 30, 2030 or April 30, 2037 Opt Out Period During the period from the beginning of the Sunrise Period until one month before the end of the Transitional Period, it is possible to opt out from the exclusive jurisdiction of the Unified Patent Court, which is referred to as the Opt Out period. Please note that if an Opt Out’s application is accepted during the Sunrise Period, it will be deemed registered on the effective date of the Unified Patent Court Agreement.
How to Obtain a Unitary Effect Patent
1. In order to obtain a patent with unitary effect, a country must be a participating country at the time of registration of the patent with unitary effect. A country that participates after the registration does not have the right to apply for a unitary patent.
2. Process
(1) Application is filed with the European Patent Office (EPO).
(2) The procedure to receive a patent decision after examination is the same as before.
(3) Procedures during the opt-out period
(i) If the applicant chooses to proceed with the registration of a unitary effect patent
1) Request for Unitary Effect
The applicant must file a written request for unitary effect with the European Patent Office within one month from the publication of the Notice of Grant (the date of publication of the patent registration in the European Patent Bulletin). No extension of this one-month time limit will be granted. The request for unitary effect may be withdrawn until the registration or the refusal of the request for unitary effect becomes final. Dual registration of a unitary effect patent and a conventional European patent is not allowed.
2) Submission of Translation
A translation of the entire statement is required and must be submitted at the same time as the request for unitary effect. The language of the translation to be submitted depends on the language of the procedure.
(a) English
A translation in one of the official languages of the European Union
(b) French or German
Translation English is for informational purposes only and is not legally binding. Machine translation of the translated text is not permitted. Since machine translation is intended to be used, after the transitional period it will no longer be necessary to submit a translation, regardless of the language of the procedure.
(ii) If you choose to opt out
(a) About Opt-out period. Please note that even during said period, if a lawsuit is filed in the Unified Patent Court, the applicant may not opt out thereafter.
(b) About applicant/patentee. Please note that an attorney-at-law or European patent attorney who is qualified to represent the applicant in litigation before the Unified Patent Court may represent the applicant in the proceedings. If an application is filed by a person other than said patent attorney, a power of attorney is required. In case of co-ownership of a patent, the consent of all co-owners is required.
(c) About Opt-out application
Apply online using the UPC Case Management System. Enter the subject patent or patent application number and the patentee.
(d) About Opt-out application fee
There is no fee, however, local and Japanese agent fees will be charged.
(e) The opt-out becomes effective upon registration in the Registry. Once registered, the opt-out will last for the duration of the patent in question, even after the end of the transition period.
Once opted out, it is also possible to opt-in to have the patent transferred again to the exclusive jurisdiction system of the Unified Patent Court. To do so, you must file a request to withdraw your opt-out, however, if the patent is still pending in a national court, the withdrawal request will not be granted. Also, once you have withdrawn your opt-out request, you are not allowed to opt-out again.
(4) After the opt-out period
Only refusal of a unitary effect patent registration or unitary effect claim will be made.
(5) Expenses
(i) Renewal fee
For patents with a unitary effect, the payment of maintenance fees will also be unified among participating countries.The maintenance fee will be equivalent to the sum of the fees of the four countries (the U.K., France, Germany, and the Netherlands) for a conventional European patent.
(ii) Patent application and prosecution fees
The same applies for a conventional European patent registration.
Temporary Measures
To facilitate an early grant of unitary effect patents, there are two temporary transitional measures applicable to European patent applications for which a Rule 71(3) EPC communication has been issued.
(1) Reason why provisional measures are established
When the European Patent Office (EPO) decides that a European patent can be granted, it notifies the applicant of the basis for the decision in accordance with Rule 71(3) EPC. The applicant is required to pay the fees for grant and publication and to submit, within 10 days + 4 months, a translation of the claims in two official languages of the European Patent Office other than the language of the proceedings. Please note that this time limit cannot be extended. If the applicant proceeds with the response procedure of paying the fee and submitting the translation within this time frame, it will be deemed that the applicant has approved the text intended to grant rights. If the response procedure is followed without careful consideration, a patent may be granted before the Unified Patent Court Agreement enters into force, in which case the applicant will not have the opportunity to opt for a unitary effect patent.
2) Early request for unitary effect
An early request for a unitary effect patent is a measure whereby a unitary effect patent t will be registered immediately on June 1, 2023, the scheduled date of issuance of the unitary effect patent system. This measure was established to prevent the possibility of delays in the registration process due to the high number of requests for a unitary effect patent that would be received after the Unified Patent Court Agreement has entered into force.
(1) Requirements
a) Claim period is January 1, 2023 – May 31, 2023 (before the Unified Patent Court Agreement comes into effect)
b) A Rule 71(3) EPC communication has been issued. However, to avoid the publication of the reference to the grant of a patent before the Unified Patent Court Agreement enters into force, the response to the Rule 71(3) EPC must be made after the publication of the reference to the grant of a patent enters into force.
3) Request for delay in issuing the decision to grant a European patent
A request for delay in issuing the decision to grant a European patent is a measure that allows the publication of a reference to the grant of a European patent immediately after the entry into force of the Agreement on the Unified Patent Court. If the applicant proceeds with the response procedure to the communication under Rule 71(3) EPC for an application for which permission was granted prior to the entry into force of the Agreement on a Unified Patent Court, it is possible that the decision to grant the patent (publication) will be issued prior to the entry into force of the Agreement on a Unified Patent Court. In this case, the applicant will not have the opportunity to choose a unitary patent.
Therefore, in order to have the opportunity to opt for a unitary effect patent, the applicant of a European patent application may file a request to delay grant after receiving a communication under Rule 71(3) EPC from the European Patent Office (a preliminary notice of allowance) but before responding to the approval of the document intended to grant a patent. This request delays the decision to grant the patent so that the publication of the reference occurs after the Unified Patent Court Agreement enters into force, thus providing the opportunity to opt for a unitary effect patent.
1) Requirements
(1) Claim period is January 1, 2023 – May 31, 2023 (before the effective date of the Unified Patent Court Agreement)
(2) A Rule 71(3) EPC communication in a European patent application has been issued.
(3) In the Rule 71(3) EPC communication, the applicant has not responded to the acknowledgement of the communication presented to him for the grant of the patent.
2) If January 1, 2023, falls within the response period to the Rule 71(3) EPC communication, to have the opportunity to opt a unitary effect patent, a request for delay must be filed together with the response to the Rule 71(3) EPC approval.
3) Procedure
A request to delay the issuance of a decision granting a European patent must be made using special request form (the EPO (Form 2025)) provided by the EPO, which will be made available on the EPO’s website in due course.
Unified Patent Court
The Unified Patent Court is a new international court established under the Agreement on a Unified Patent Court to govern patent revocation and infringement proceedings in connection with actions relating to Unitary Effect patents, conventional European patents, and Supplementary Protection Certificates (SPC) issued for the products covered by these patents and patent applications. Its jurisdiction will extend to all participating countries and a single infringement action can be brought against all participating countries.
1. The Unified Patent Court consists of:
(1) a Decentralised Court of First Instance
Central Division Headquarters: Paris, Branch: Munich, third location to be determined
Multiple regional divisions (any participating country may establish one)
Multiple regional divisions (can be established in two or more participating countries)
(2) A Common Court of Appeal: Luxembourg
(1) Patent Mediation and Arbitration Center: Lisbon and Ljubljana
(2) Judges Training Center: Budapest
2. Timing of Judgment by the Unified Patent Court
The judgment of the first instance is rendered within approximately one year from the filing of the lawsui.
3. Advantages and disadvantages of the exclusive jurisdiction of the Unified Patent Court
(1) Advantages
All litigation involving unitary effect patents will be under the exclusive jurisdiction of the Unified Patent Court. Since there is no need to litigate the same case in multiple participating countries, consistency can be maintained, and procedures and litigation costs can be reduced.
(2) Disadvantages
If a right is determined to be invalid (cancelled), the rights of all participating countries will be cancelled. This is called a Central Attack. The Unified Patent Court does not have jurisdiction over national patents, which means that patents filed and patented directly in a participating country are not subject to the jurisdiction of the Unified Patent Court.
4. Exceptions
The Unified Patent Court has jurisdiction over European patents (including those that are already European patents), however, during the opt-out period, the patentee may choose to opt out of the exclusive jurisdiction of the Unified Patent Court by excluding the European Patent from its exclusive jurisdiction. Please note that it is not possible to opt out after the opt-out period has expired.
i. If you do not choose to opt-out
(1) During the opt-out period
The Unified Patent Court and the national courts will have concurrent jurisdiction. It should be noted that the choice of this court can be made by the person filing the suit, and the court chosen there has jurisdiction, so there is a risk that the case will be tried in an undesired jurisdiction due to an earlier suit filed by a third party.
(2) After the opt-out period
All conventional European patents that have not undergone opt-out procedures by the end of such transition period will be subject to the exclusive jurisdiction of the Unified Patent Court.
ii. If you choose to opt out
Unless a lawsuit has already been filed against the Unified Patent Court, the exclusive jurisdiction of the respective national courts will apply.
iii. Withdrawal of Opt-out once done
You may withdraw your opt-out at any time (opt-in-back) as long as no action has been filed in your country’s courts. As long as the opt-out is not withdrawn, the exclusive jurisdiction of the national courts will continue to apply after the transitional period. However, after the opt-out has been withdrawn, it is not possible to opt-out again.
It is also possible to opt-out of a conventional European patent application pending before the European Patent Office during the opt-out period. In this case, the opt-out will be automatically applied after the patent is granted.
(1) If you withdraw your opt-out during the opt-out period, the jurisdiction will revert to the concurrent jurisdiction of the Unified Patent Court and the national courts.
(2) If you withdraw your opt-out after the opt-out period, the exclusive jurisdiction of the Unified Patent Court will revert to the Unified Patent Court.
Jurisdiction over Litigation Concerning Unitary Effect Patents and Conventional European Patents
Things to consider regarding unitary effect patents/opt-out procedure
1. If there is a high risk of patent invalidation (revocation) suits being filed in many transition countries, then an opt-out procedure should be performed to avoid a central attack.
2. While the quality of the Unified Patent Court is unknown, it is possible to deal with a single infringement suit, which has the advantage of more countries being transitioned and the cost of litigation being lower.
3. The cost of an opt-out local representative is expected to be approximately less than 200 euros per case, however, it is possible to reduce the cost by applying to one place collectively, instead of requesting individual representative offices abroad for each case. Please note that some offices charge a time fee, so it is necessary to confirm the cost in advance.
4. After the expiration of the opt-out period, it will no longer be possible to opt out, and the Unified Patent Court will have jurisdiction over patent litigation except for cases in which opt-out procedures have been completed by the end of the opt-out period. Therefore, if the transition period has passed and the applicant does not wish to apply to the Unified Patent Court jurisdiction, he/she should consider choosing to file a national application instead of a European Patent Office (EPC) application at the time of filing the application.
5. A European patent application that is currently pending or will be pending before the European Patent Office will, within the opt-out period, be given the choice of a unitary patent or a conventional European patent for the countries participating in the Unified Patent Court when responding to communication under Rule 71(3) EPC (Notice of Advance Notice of Allowance). In making this choice, it is important to consider whether or not an opt-out procedure is required to exclude the Unified Patent Court from jurisdiction.
The maintenance fee for a patent with unitary effect is set to be equivalent to the total amount of maintenance fees in four countries where European patents are most frequently registered (the U.K., France, Germany, and the Netherlands). Therefore, from the viewpoint of maintenance fees, it is worthwhile to consider registering a patent with unitary effect if the number of participating countries that wish to register is four or more. However, since a conventional European patent that has already been registered cannot be converted to a unitary effect patent, the maintenance fee will remain the same.
6. In cases where a response to the Rule 71(3) EPC communication is expected and the patentee wishes to register a patent with unitary effect, a request for delay in issuing the decision to grant a European patent will delay the granting of the patent.
7. When it comes to determining whether an opt-out is necessary, the intent of the licensee must also be taken into consideration. For example, if a patent is patented in Germany and France, and there is an exclusive licensee in both Germany and France, and for some reason one of the licensees does not wish to be tried in the jurisdiction of the Unified Patent Court, the other licensee will be entitled to opt-out proceedings. In this case, the patentee’s decision may be contrary to the wishes of one of the licensees and therefore, especially when there are multiple licensees, it is necessary to consult with all licensees in advance and reach an agreement on whether or not an opt-out procedure is required.
8. Even if the applicant opts for a unitary effect patent, he/she should consider filing a divisional application for a rights-important European patent application, just in case, to ensure jurisdiction in the national courts by filing a divisional application in anticipation of a central attack and opting out of the rights based on the divisional application.
9. Whether or not to opt out depends on whether or not avoiding the risk of central attack is a top priority. If avoiding the risk of central attack is a priority, then opting out should be considered.
10. During the transition period, opting out can only be done if a lawsuit has not been filed in the Unified Patent Court, so it is possible to opt out only during the Sunrise Period with certainty. If the patentee wishes to opt-out and anticipates a high risk of litigation for a European patent, he/she should consider opting out during the Sunrise Period.
11. In order to reduce renewal fees, there is no option to partially not renew the patent prior to the expiration of the patent term.
12. Until the Unified Patent Court actually begins to operate and stabilize its functioning, it is worth considering removing it from the exclusive jurisdiction of the Unified Patent Court.
Disclaimer:
This information is intended to provide general information that Asamura IP has gathered at this time and the views of our European representatives, which may change in the future.
If you would like to request our opinion on a specific case, please feel free to contact us separately.
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