This post provides an overview of the recent CIPA webinar: Getting Practical with European Patents & the Unified Patent Court – Episode 1 presented by Pippa Allen. This webinar was the first in a series about the unitary patent system. The next seminar is on Getting practical with European patents and the UPC EP2: managing the knowns and the unknowns of the “opt-out”. Future seminars will cover aspects of the unitary patent system referenced here in more detail, e.g. validity and infringement opinions and also a look at the Case Management System (CMS) that will be used to manage actions in front of the new Unified Patent Court.
It is noted that Getting Practical Episode 1 webinar was an extremely content rich presentation and IPcopy will not cover all aspects discussed. Interested readers are directed to the links at the bottom of the post for further information.
The webinar aimed to give an overview of the unitary patent system and then look at the practical aspects that representatives and clients will face as the system comes into effect. In particular the webinar touched on client care issues, administrative and liability issues. All of these issues require immediate consideration as, even though the unitary patent system is not planned to be in operation until late 2017 (though probably more likely early 2018 in light of the UK general election), actions taken now (or ignored now) will have an impact on both clients and representatives as the entry into force date gets closer.
Readers familiar with the unitary patent system, the likely timescale for implementation and concepts such as the opt-out and the sunrise period can jump the next few paragraphs by clicking here and heading straight to the practical aspects sections.
Brief recap of the unitary patent system
More details surrounding the unitary patent system can be found in IPcopy’s earlier post here. However, it is noted that in essence the system hopes to create a European patent registration and litigation system, via the unitary patent and the Unified Patent Court.
Once the system is live then patent owners can, upon grant of their European patent, request a “European patent with unitary effect” (a “unitary patent”). Such a unitary patent will have unitary effect in multiple countries across the EU (there will be at least 14 countries taking part at the start).
As well as obtaining unitary patents it will still be possible to validate a granted European patent in a number of territories as happens at present (referred to here as “classical European patents”).
It will not be possible to obtain both a unitary patent and a classical European patent in respect of the same country (so, for example, you will not be able to obtain a unitary patent (which will cover France) as well as an EP(FR)).
Where a patent owner wants European patent protection in countries that are not part of the unitary patent system, e.g. Spain or Switzerland, as well as countries that are within the unitary patent system, then they have a couple of options: (i) they can obtain classical European patents only for the specific countries they want (e.g. EP(ES), EP(FR), EP(CH), EP(DE)) or (ii) they can obtain a unitary patent covering the unitary patent countries (France and Germany in the above example) and classical European patents for those countries outside the system. In this second option therefore the patent owner will end up with a mix of patent types, namely a unitary patent (covering FR, DE in the above example plus all the other countries participating in the unitary patent system) and classical EP patents (covering ES, CH).
For unitary patents there will be a single renewal fee. It will not be possible to convert a unitary patent to a bundle of classical European patents and so it will not be possible, for example, to reduce renewal fees by dropping validated EP patents in certain territories.
The Unified Patent Court (UPC) will be a single court within the member states that have ratified the UPC Agreement. There will be a Court of First Instance, an Appeal Court and a Registry. The Court will have competence over traditional EP patents, unitary patents and supplementary protection certificates (SPCs) issued for products covered by such patents and patent applications. The new Unified Patent Court will have sole competence to hear actions relating to unitary patents. Actions relating to unitary patents cannot be brought in front of national courts. Decisions of the court will have effect in all the states that have ratified the agreement.
The transitional period and the opt-out
During a transitional period it will be possible to bring court actions in respect of classical European patents in front of either the national courts or the UPC). This transitional period will last for 7 (possibly 14 years).
Additionally, it will be possible to request an opt-out of a classical European patent (or a pending European patent application) from the jurisdiction of the UPC. Such opt-outs can only be filed before the end of the transitional period and also can only be filed if an action at the UPC has not already commenced.
An opt-out of a classical European patent may (depending on the specifics of the case) be withdrawn in order to bring the classical European patent back into the jurisdiction of the UPC. It will only be possible to file one opt-out request and one withdrawal of an op-out request for a given European patent.
Only the proprietor of a European patent can register an opt-out. Where there are joint proprietors all of them need to consent to the opt-out.
Once an opt-out is registered all the validations for a particular EP patent are opted-out.
Opt-outs automatically extend to SPCs that are issued in respect of products that are covered by the opted-out classical European patent.
The Unified Patent Court
The new court has a number of pros and cons associated with it. On the one hand it will enable a patent owner to obtain a single decision across all the countries within the competence of the UPC. On the other hand it will open up the patent owner’s patents to central attack. Both classical European patents that have not been opted out and unitary patents will be susceptible to central attack throughout the life of the patent.
Timescale for Implementation
The official timescale for the unitary patent system to go live is 1 December 2017. This date is dependent on factors such as the ratification of the system by the UK and by Germany and by the potential impact of the General Election in the UK and it is possible (probable in IPcopy’s view) that the start date may be delayed by a few months until early 2018.
The sunrise period
Before the unitary patent system goes live it will be possible to register an opt-out of a classical European patent (or a pending European patent application). At the moment the system enters into force, such patents/patent applications will be immediately opted out from the jurisdiction of the UPC.
Practical considerations relating to the Unitary patent system – Issues and Hazards
From the above (brief) overview of the unitary patent system it will be apparent to readers that there are likely to be a number of pitfalls that could place clients at a disadvantage.
Pending European patent applications – owners of pending patent applications that are close to grant may miss out on the option of choosing to have a unitary patent if their patent grants before the unitary patent system enters into force. However, in many cases, it should be a relatively simple matter to delay the grant of such applications so that the owner can have the option of using the unitary patent system.
Patents applications reaching grant – for applications that proceed to grant, care should be taken when making a request for unitary effect for the granted patent. The deadline for making such a request is within one month of grant. If a request is incorrectly made there is potential for a case to be lost if the request is not corrected before the national validation deadlines pass.
Already granted “classical” European patents – such patents will, by default, fall within the jurisdiction of the UPC at the point the unitary patent system enters into force. If the opt-out of such patents is overlooked this could cause potential issues to both the owner and the representative. This is because, if a third party starts an action in the UPC, then such patents will become seized by the UPC and it will not be possible to opt them out.
SPCs – expired classical European patents can be opted-out. Where the SPC holder is not the same as the patent proprietor then both parties need to lodge the opt-out application for it to be effective.
Making opt-outs – as well as the possibility of overlooking an opt-out, there are other issues to consider. Consent for an opt-out needs to come from the proprietor (or all the proprietors) of a patent. Some due diligence may therefore be required to check the correct owners of a patent. Requests for opt-outs (and withdrawals of opt-out requests) need to be made through the UPC’s Case Management System (CMS). This is an all electronic system and is distinct from the EP register. If a procedural error is made in requesting an opt-out then the patent in question will not be opted out until the request is corrected. If a third party starts an action in the interim then the opt-out request, once corrected, will be ineffective.
Opinion based work – freedom to operate opinions (FTO) and infringement and validity (I&V) work will need to beware that two different jurisdictions could apply to the same territory (national court and UPC) and that the jurisdiction could change over time.
Revocation actions – it will be possible for third parties to centrally attack classical European patents in the UPC unless they are opted out. Clients interested in attacking a European patent therefore need to be informed of such an option. Additionally, the opt-out status of classical European patents could be watched.
Timeline for actions
From May 2017 – notifying clients and changing internal processes
Representatives should now be considering notifying clients of the above issues. In particular, representatives need to consider sending communications to clients covering the options and issues impacting their cases since a generic mailshot is likely to be overlooked.
For pending applications that are close to grant the client needs to be informed of the possibility of delaying grant in order to take advantage of requesting a unitary patent. Standard wording relating to the delay of grant should be added to outgoing client communications (this is of particular concern for cases that are already reaching the rule 71(3) stage). Client instructions will be needed to slow down the prosecution of a case and so the outgoing client communications should be clear what the default action will be in the absence of such instructions.
Representatives will need to determine which classical European patents and which pending European patent applications will be impacted by either the above opt-out considerations or the possibility of requesting unitary effect on grant. The correct proprietor(s) of specific cases need to be determined before opt-out instructions can be made and actioned.
FTO/I&V opinions need to be suitably caveated to highlight the dual jurisdiction issue and to be clear on what basis the opinion is being provided.
Further points to consider:
Requesting unitary effect – not all European patents will be able to request unitary effect when they grant. More detail on this issue can be found here but four conditions will need to be met for a patent to be eligible to request unitary effect when it grants:
1) Was the patent application filed after 1 March 2007?
2) If the patent application was filed between 1 March 2007 and 1 April 2009, were all designated states requested?
3) Did all the unitary patent states remain designated at the point of grant*?
4) Is there a single claim set covering all designated states?
If the answer to all four questions is “yes” then the patent is eligible to request unitary effect. The outcome of the eligibility test needs to be determined before issuing a standard reporting letter that would otherwise offer a unitary patent as a future option and before sending dedicated UPC notification letters.
[*Noting that it is possible to withdraw designations prior to grant of a European patent]
Requesting an opt-out – as well as pending patent applications and classical European patents that are in force, representatives will need to notify owners of recently expired classical European patents of the opt-out process. This is for two reasons – SPCs and the possibility of bringing actions after a patent has expired.
Representatives will therefore need to identify (i) pending patent applications, (ii) granted and in force classical European patents and (iii) classical European patents that expired within 6 years or so of the entry into force of the unitary patent system. For all of these patent properties the owners need to be informed.
Identifying the owner(s) of a European patent/consent to opt-out – The correct owner(s) of a European patent will need to be determined. Care should be taken that it is the client’s responsibility to confirm the ownership situation and gain consent for an opt-out to be made in the event of multiple owners.
Manner of notification – When notifying the client of the opt-out issue and the sunrise period, care will need to be taken how the communication is worded so that the representative is not left in a state of limbo with respect to the action that should be taken in the default position. Clients need to be informed that the default position as far as the unitary patent system is concerned is that classical European patents will fall within the jurisdiction of the UPC on entry into force of the system and the implications of this (e.g. central attack and revocation)
Internal systems –
- how will the opt-out status be recorded on internal systems, what reminders will be required to deal with the sunrise period and the entry into force of the unitary patent system?
- Additionally what reminders will be required going forward on all cases? E.g. reminders should be added for cases reaching the rule 71(3) stage to check the opt-out status of the patent application and that this status matches the owner’s wishes.
- There will be a need to get familiar with the CMS. It is possible to register to use the beta version of the CMS.
- Representatives will need to determine how much will be charged per out-out request and per unitary patent request.
From sunrise period, entry into force and beyond
Opt-out requests filed in the sunrise period will need to be reported. Reporting letters will need to highlight the possibility and consequences of withdrawing the opt-out request and also possible future developments (e.g. Brexit).
Standard letters may be amended to highlight the opt-out process and its importance. Intention to grant letters may be updated to reflect the unitary patent request option and how it relates to the current validation process.
You can’t escape Brexit….
Based on the current entry into force date of the unitary patent system, there will only be just over a year before the UK is scheduled to leave the EU. The conditions of our departure are not yet known but will have an impact upon the unitary patent system (can the UK still stay part of the system being the main one!).
It will therefore be necessary to keep standard processes under review as and when new information relating to the terms of Brexit becomes known. In particular, it may be necessary to revisit a client’s particular default opt-out action and to consider alternative European prosecution routes (parallel parent and divisional applications, national patents etc).
Other Points to Consider
Consideration needs to be given to cases that have been long granted and which may be with a third party renewal agent. Who has responsibility to inform clients? Does it change anything if you were originally the EP representative or if you were just a local address for service during validation for an EP patent that had a representative elsewhere in Europe during prosecution?
What about former clients? Some thought may be needed when cases are being transferred between representatives.
The above article represents this IPcopywriter’s take on the first CIPA UP/UPC webinar. It goes without saying that this post does not represent legal advice and representatives and patent owners should undertake their own reviews and obtain their own advice in order to prepare themselves for the unitary patent system. This post by no means covers all the points raised in the webinar which, as noted above, covered a lot of ground.
Mark Richardson 2 May 2017
Main website: Unified Patent Court website https://www.unified-patent-court.org/
Agreement – https://www.unified-patent-court.org/sites/default/files/upc-agreement.pdf
Regulation (EU) No. 1257/2012
Main website: Access to European Law website http://eur-lex.europa.eu/
Regulation – http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32012R1257&from=EN
Regulation (EU) No 1260/2012
Draft Rules relating to Unitary Patent Protection (Implementation at EPO of Regulations 1257, 1260)
Main website: EPO https://www.epo.org/
Draft Rules – http://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124AC70DBC1257DB10028B3D4/$File/e_draft_rules_unitary_patent.pdf
From Unified Patent Court website (https://www.unified-patent-court.org/ )
18th Draft Rules of Procedure of the Unified Patent Court
Rules – https://www.unified-patent-court.org/sites/default/files/upc_rules_of_procedure_18th_draft_15_march_2017_final_clear.pdf
Rules on Court Fees (Proposal of Preparatory Committee for UPC)
Rules on court fees and recoverable costs – https://www.unified-patent-court.org/news/17th-preparatory-committee-30-june-2016
Rules on EPLC and other Appropriate Qualifications (Draft Decision of Administration Committee)
Main website: Unified Patent Court website https://www.unified-patent-court.org/
EPLC Rules – https://www.unified-patent-court.org/news/european-patent-litigation-certificate-revised