Episode 4 of the CIPA series on the unitary patent system looked at factors that might impact an applicant’s patent strategy. This entry into the CIPA UPC series covered some similar ground to the first three seminars and so we’ve tried to represent the main points in the table below. This session was notable for the extended Q&A session (which IPcopy personally enjoyed) which, in our view, suggested that there may still be some misunderstandings over how the unitary patent system will work in practice. Some of the themes from the Q&A are also discussed below along with a few other titbits of information.

The speaker, Dave Croston of Withers & Rogers, pointed out that the webinar would not be an algorithm that you could plug factors into in order to develop a patent strategy. Neither would it be an exhaustive look at all strategy based points. Rather the seminar aimed to provide a headline look at a number of the issues.

Introduction

The session opened by highlighting that the unitary patent system would introduce some new choices to patent applicants in Europe. Currently the main choice has been between the national patent route and applying for a European patent. However, once the unitary patent system comes into effect* there will be a couple of further decisions to consider for the average applicant, namely (i) is a unitary patent required for the UP member states and (ii) should EP bundle patents and EP patent applications be opted out from the competence of the Unified Patent Court (UPC).

Dave pointed out that there is unlikely to be a one-size-fits-all answer to the above issues.

Unitary patents (UPs) vs European patents (EPs) vs national patents

Opt-outs

We’ve covered the opt-out in detail in the earlier posts in this series (see Episode 1, Episode 2, Episode 3). However, a few points are worth repeating:

• Only traditionally validated EP patents can be opted out. Unitary patents must be litigated in the UPC and cannot be opted out.
• Opting out EP patents could possibly effectively disclose information about the high value patents in a patent owner’s portfolio.
• If several patents protect a particular product then the risk of losing protection via central revocation in the UPC would likely be reduced as multiple patents would need to be revoked.

 The Q&A

As noted above this talk had a far higher proportion of time devoted to its Q&A session than previous talks in the series. Some thoughts and observations on the topics discussed are as follows:

Will there by stays between UPC actions and EPO Oppositions? Rule 295 of the Rules of Procedure of the UPC indicates that stays of UPC proceedings may occur if an opposition or subsequent appeal action at the EPO is in progress and is likely to result in a rapid decision.

Will there be any point in having EP bundle patents after the transitional phase ends (at which point EP bundle patents will always fall within competence of UPC)? After the transitional period in the UPC ends (either 7 or 14 years after the unitary patent system enters into force) all EP patents will need to use the UPC. Having a bundle of EP patents however would still allow portfolio to be pruned to reduce renewal fees over time.

If a parent application is opted out, does same opt-out status automatically apply to divisional applications? No. Each patent application needs to be opted out.

Does the UPC provide a mechanism for effectively extending protection into states you didn’t validate in? No. If your bundle of validated EP patents doesn’t cover France then you won’t suddenly get protection in France when the UPC enters into force.

Can already granted EP bundle patents be converted up into a unitary patent? Similar to the above question, a bundle of already granted EP patents cannot be converted into a unitary patent. There is no mechanism for this and the deadline for requesting unitary effect has passed.

Mark Richardson 6 July 2017 

*Note: in this post, IPcopy is going to ignore the ongoing uncertainty over the UK’s participation in the scheme and the potential consequences that might have….