Back in December last year IPcopy started to take a look back at the unitary patent package and where we are in delivering this new unitary patent system. Our first “Where are we now?” post provided an overview of the Unified Patent Court itself and the second post looked at the progress there had been towards delivering the system. This entry asks what progress has there been on the road to getting the system up and running. Remember that although the original implementation date (end of 2014) was missed there has been some significant progress in delivering the new system.

Q: So, now I know more about the unitary patent package, what should I be doing now to be ready when the system launches?

This is a good question! Without definite information about the costs of the new system the level of preparation anyone can do is slightly limited. However, there are a few issues to consider and a few positive actions that can be undertaken now.

1. Consider your position in principle toward the unitary patent package

The first thing that anyone can do is to put the fee considerations to one side and consider in principle how you feel towards the new system. The unitary patent package will provide a single patent that may cover up to 24 of the European Union countries instead of the country by country coverage that the EPC provides.

A single patent may seem attractive as it would allow enforcement over a larger area and would require a lower annual maintenance fee than similar protection today. A single injunction awarded in respect of a unitary patent will be enforceable across every unitary patent country.

However, there are drawbacks to the unitary patent system.

It should not be forgotten that if you require protection in any non-EU EPC state or if you require protection in Spain, Italy, Poland or Croatia, then traditional nationally validated EP patents will still be required.

If your major markets are UK, France, Germany and Spain then how useful or cost-effective  will a unitary patent truly be?

Additionally, the benefits of the unitary patent system that arise from its unitary nature (single court, single renewal fee) are also potentially its drawbacks since a patent owner’s patent will be vulnerable across Europe to a single attack. Furthermore, the single renewal fee will prevent “portfolio pruning”. It will no longer be possible to drop countries from your renewal programme over time; instead patent owners will be faced with a binary decision to either keep or drop their entire unitary patent.

For clients with the funds it may be possible to use divisional filings to effectively obtain two patents with very similar claim scope and then validate one patent as a unitary patent and validate the other as a series of “traditional EPs”. This would potentially allow owners to get the best of both worlds. The unitary patent would provide access to the Unified Patent Court and the “traditional EPs” could be opted out from the competence of the UPC to provide access, during the transitional period at least, to the existing national courts. And of course, there is still the national patent route that could be considered.

So, first things first, decide whether you want to buy into the unitary patent system in principle and how you might use the various options on offer and then fine tune how your portfolio is managed once the fees become clearer.

2. Assess portfolios against predicted Unitary patent renewal fee/Opt-out fee levels

Although we don’t yet know the level of the unitary patent renewal fee it may be possible for a patent owner to consider what they regard a reasonable renewal fee to be. Once the fees (eventually) get published this may make it easier to prepare a patent portfolio, especially a large one, for the new regime.

Similarly, patent owners could assess now what they regard a fair opt-out fee to be. Traditional European patents that have been validated in specific states will fall within the competence of the new court and so, particularly for large portfolios, it would be worth assessing now which patents might be left within the new court system and which opted out depending on one or more opt-out fee level assumptions.

It should be noted that there will be a sunrise provision before the system goes live where existing European patents may be opted out from the competence of the Unified Patent Court. Although relevant to all sizes of patent portfolios, large portfolios may require an opt-out strategy to be developed.

3. Keep pending applications pending?

The start of the unitary patent system may only be just over a year away. Where a particular patent application is a unitary patent candidate consideration should be given to either trying to keep that application pending or to file a divisional patent application prior to grant, if grant looks likely to occur prior to the unitary patent system going live.

4. Review licence agreements – enforcement

Under Article 47 UPCA an exclusive licensee can enforce a patent without the owner’s permission (unless the licence says otherwise). Non-exclusive licensees on the other hand cannot bring an action without the owner’s permission (unless provided for in the licence agreement). Both patent owners and licensees should therefore review their licence agreements now to make sure they say what everyone wants.

5. Review licence agreements – opt out

Under Article 83 UPCA it is the “patent proprietor” not a licensee that gets to choose whether a European patent application or nationally validated European patent is opted out from the competence of the Unified Patent Court. Licensees with a strong opinion on the issue of opting out should therefore ensure that their licences reflect this.

6. Joint applicants

If you file patent applications in joint names then the manner in which a unitary patent will be treated as an item of property will actually be affected by who is named first on the application (Article 7(2) of the Unitary Patent Regulation). If for instance a German applicant appears first then German property law would apply (no permission required for a joint applicant to sell their share of the patent) whereas if a UK applicant is named first then the UK Patents Act will apply (permission required for a joint applicant to sell their share of the patent).

The final instalment in this series will be published next week and will cover the process of obtaining a unitary patent.

More articles on the unitary patent system can be found on IPcopy’s dedicated Unitary Patent Package page.

Mark Richardson 21 January 2015