Unitary Patent Information Series (Article 5) - A long and complex transition

28 October 2013

A long and complex transition

The fifth article in our Unitary Patent Information series looks at the transition period whereby several systems for obtaining patent protection in Europe will coexist alongside each other:

It is likely to be several years yet before the UP package enters into force. Furthermore, once this has eventually taken place there will follow a long transition period during which time obtaining patent protection in Europe will for many patentees be more, rather than less, complex.

This added complexity is partly due to the time needed to ratify the regulation by those member states that have agreed to join. In some cases this may require a referendum. Thus there will be a period between the entry into force of the UP (i.e. when the minimum thirteen countries have ratified the UPC Agreement) and the point at which all participating states have ratified. During this period, the list of participating states which are covered by a given UP will be only those states who had ratified the UPC Agreement at the date of grant of that UP. Ratification by a state after grant will not give a retrospective unitary coverage.

In principle, once the UP package has entered into force all European Patents issued by the EPO, both unitary and non-unitary, will fall under the jurisdiction of the newly created UPC. However, another complicating factor is that it will be possible to opt-out of the jurisdiction of the UPC for any non-unitary EP patent which is in force or which becomes granted during the UPC transitional period mentioned in section 4 above. For these non-unitary EP patents the national courts will retain their existing  jurisdiction, and actions against them will not be able to be brought before the UPC. An “opted out” patent may later be “opted in” again. This transitional period will last for at least seven years, and could potentially be extend by up to a further seven years.

There are also contracting states of the European Patent Convention that are not currently subject to the UP Regulation. In some cases - namely Spain and Italy – this is of their own free will, but in other cases this is because they are outside the EU - for instance Switzerland, Norway and Turkey. These countries may eventually become participating states, by becoming EU members and/or deciding to sign up to the UP package. Croatia, for example, may become a participating state after it accedes to the European Union on 1st July 2013.

So, during a period of time lasting up to 14 years from the entry into force of the UP package, applicants will have the following options for obtaining patent protection in Europe:

(i) via national patent applications granted by a National patent office;
(ii) via European patents nationally validated but not subject to the UPC due to an opt-out, due to the non-ratification by a participating state, or with respect to non-EU states;
(iii) via European patents that were nationally validated, but within the jurisdiction system of the UPC; and
(iv) via UPs.

During the transition period, all systems will coexist alongside each other. After the end of the transition period, however, only options (i), (ii) (with respect to non-participating states only) and (iv) will be available.

Options (i) and (ii) are known and tried routes, and benefit from the fact that it will not be possible to centrally revoke the patents obtained by these routes. However, these options may not be cost competitive (depending on the level of the fees associated with the UP, which is as yet unknown). Options (iii) and (iv) will both place the applicant under the jurisdiction of the new UPC, but only option (iv) may also offer the benefit of potential cost savings. Finally, the “old” system, as represented by option (ii) with respect to non-participating states, will continue for those states that are outside the agreement for whatever reason. For example, an applicant seeking patent protection in, say, Italy and Switzerland will still have to file either national applications or national validations in these states.

So, at least during the transition period, there will be additional strategic and tactical options for applicants to consider. These strategic considerations will be discussed further in the next article.

Our Experts
David O'Connell
David O'Connell
Locations: Bristol (UK) The Netherlands (NL)
Robert Margue
Robert Margue
Locations: Munich (Germany)

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