Decision points

The following is an outline of some key decisions for users of the European patent system over the coming months and years. This is best read in combination with our in-depth commentary on the Unitary Patent (UP) and Unified Patent Court (UPC), our timeline for the UPC, which provide the background information behind these key decisions.

Decisions to be made before the UP system comes into effect (potentially early 2018):

1. For existing granted European patents: whether or not to opt out of the Unified Patent Court (UPC)?

This is an immediate priority for patent owners to consider. Granted European patents and pending applications can be opted out of the UPC during a three month “sunrise period” in advance of the UP system coming into effect. An opt-out could still be filed later. An opt-out will avoid the possibility of central revocation proceedings before the UPC, and may be most appropriate for patents considered a high priority for central revocation by competitors. An opt-out can be withdrawn (once), provided no proceedings are pending before national courts. Therefore, the option of using the UPC may still be open to patent owners even if they have opted-out their EP patents/applications.

Opting out will require proprietors to submit an online form to the Registry of the UPC, but there will be no official fee. Taking no action will result in the default position of the existing European patent being under the jurisdiction of the UPC (and the national courts).

Decisions to be made after the UP system comes into effect:

2. Upon grant of European patent: whether or not to request a Unitary Patent?

To obtain patent protection in UP-participating states, patentees will have the choice between selectively validating a European Patent in individual states (as currently), or requesting a Unitary Patent to cover all UP-participating states. 

There will be a deadline of just one month from publication of grant of a European patent to request a Unitary Patent. This will involve filing at the EPO (i) a simple ‘request for unitary effect’ and (ii) a full translation of the patent specification into another EU language. The short one-month timescale means that patentees should consider this decision as early as possible. Factors to consider include any economic benefits of a UP compared with individual validations in a patentee’s preferred states, and also the risks and opportunities presented by the UPC (see our detailed commentary and briefing note).  

3. For a non-unitary European patents (and applications): whether or not to opt out of the Unified Patent Court (UPC)?

Even if you do not request a UP, traditional non-unitary European patents validated in UP-participating states will automatically come under the jurisdiction of the UPC for the purposes of those states, unless an opt-out is filed. An opt-out can be filed for a European patent or application during the transitional period (the first 7-14 years of the UP system), unless an action has already been started before the UPC. 

To minimise the risk of an action for central revocation before the UPC, any opt-out should be made before grant. There will be no official fee for opting out. A patent owner wishing to use the UPC will still have the option to withdraw the opt-out, provided no proceedings have been initiated before a national court.

Long-term decisions (towards the end of the transitional period):

4. Whether to use European patent applications, or national patent applications, after the transitional period of the UPC.

The transitional period of the UPC, lasting between 7 and 14 years, will provide users of the European patent system with the opportunity to evaluate the positives and negatives of the UPC. 

After the transitional period, there will no longer be the option to opt out non-unitary EP patents from the UPC (for UPC-contracting states), although earlier opt-outs shall continue to apply. Those wishing to avoid the UPC for new applications filed after the transitional period will have the option of filing national patent applications or national phase entries from a PCT application (where available). 

Accordingly, it is sensible to evaluate the UPC during the transitional period and consider in the long term the choice between national patent applications, European patent applications, or a mixture of both. Patentees will need to weigh any economic benefits of European patent applications (as compared with individual national filings) against any risks or benefits of the UPC.  

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