UP and UPC – questions and answers

The prosecution at the European Patent Office does not change with the new system. The unitary patent system is related only to proceedings after the grant of a European patent.

Although the unitary patent system becomes a new alternative route for patenting, it does not mean that the classical European patent system is abolished. It will thus not be mandatory to request unitary effect, as it will still be possible to register European patents separately in all the desired EPC countries.

Since all European countries will not be part of the new unitary patent system, classical European registrations will be the only option to obtain protection via a European patent in the countries outside of the unitary patent system.

One does further have the option not to apply for protection via a European patent application, but rather via direct national patent applications, for example via the PCT-system (note that it is not possible to continue to a national proceedings after PCT in all EPC contracting states, for example in France or the Netherlands).

There is no simple answer to this question. Issues to be considered in the decision making are, i.a., the field of technology, the patent portfolio and the patenting strategy of the company.

In case the company has activities in many parts of Europe, the unitary patent system may be a cost effective and simple option for obtaining geographically broad protection for their most important markets in Europe.

In case patent protection is needed in those European countries, that have not yet ratified the UPC agreement or that are not part of the EU, a classical European patent with separate registrations is a practical solution.

The choice of court can also be an important issue: a unitary patent is automatically under the jurisdiction of the UPC, while during a transitional period the registrations of a classical European patent can be opted out from the jurisdiction of the UPC, if desired.

After the end of the transitional period also the national registrations of a classical European patent are automatically under the jurisdiction of the UPC in the participating member states. Thus, totally avoiding the UPC may require filing national patent applications directly, instead of a European patent application.

The Unified Patent Court will handle all infringement and invalidation cases of the unitary patents and classical European patents.

Concerning classical European patents, the jurisdiction of the UPC will only extend to those countries, which are part of the unitary patent system. A transitional period of at least 7 years from the starting date has been decided, during which period a patentee can opt out the classical European patent from the jurisdiction of the UPC. In this case, the European patent will remain for its lifetime under the jurisdiction of national courts. The opt out can be reversed later, if desired (opt in).

The UPC will not have jurisdiction on national patents and utility models.

Organs of the Unified Patent Court have been divided between different member states, aiming at an equal distribution. A central division of the first instance is divided to two locations, Paris and Munich.

The first instance includes, in addition to the central division, also national and regional divisions. There will be also a national division in Finland, located at the Market Court in Helsinki.

A Court of Appeal will be located in Luxembourg. In addition to the courts, there will also be arbitration centres in Lisbon and Ljubljana.

Training of the judges will take place in Budapest.

During a transitional period, the national registrations of European patents can be litigated either in national courts as separate cases, or at the UPC in a central manner for all the registrations. National litigation is possible if the patentee has opted the patent in question out from the jurisdiction of the UPC.

After the transitional period, all litigations concerning the national registrations will be handled only at the Unified Patent Court. It is however important to note that jurisdiction of the UPC, when it comes to national registrations of the European patents, only extends to those countries that participate in the unitary patent system.

In order for the national registrations of a European patent not to be under the jurisdiction of the UPC, the patentee must file an opt out request at the UPC. The request must be filed during the transitional period and before any actions have been brought against the patent. The opt out request can be filed while the application is pending or after grant of the patent.

A European patent application filed after the end of the transitional period can no longer be opted out.

It is not possible to opt out a unitary patent, even during the transitional period.

A unitary patent is a valid option in case a geographically large protection in Europe (at least 4 countries) is desired, as it can bring savings on costs relating to registrations and renewal fees, and significantly lower the bureaucracy.

A unitary patent is automatically under the jurisdiction of the UPC and brings along a risk of centralised revocation. In case the patent is highly valuable, it is worth to evaluate this risk.

When deciding on the opt out, it is necessary to consider the role of the patent in the business of the company, the extent of the patent portfolio as well as patent litigation activity of competitors.

It may be more straight forward to use the protection conferred and right to forbid others from commercially using the invention, provided by national registrations, if the infringement litigation can be handled at the UPC in a centralised manner. A uniform protection and its interpretation on a large market in Europe may improve the possibilities to commercialise technology. In such a case, opting out might not be recommended.

It is worth considering opting out in case the patent portfolio is small and/or the patent is particularly valuable and protects company’s key technology. In this way it is possible to avoid a centralised invalidation at the UPC.

It is however most important that the opt out decisions are taken in good time, preferably before entry into force of the unitary patent system, as the opt out request must be filed before any court actions have taken place.

During a transitional period (at least 6 years from the entry into force of the system) one translation of a unitary patent must be filed. If the application has been drafted and prosecuted in German or French, the granted patent must be translated into English. If the application has been drafted and prosecuted in English, the granted patent must be translated into one other official language of the EU. In case there exists a Finnish text of the application, this text can be used as a basis for the translation. Another option is to choose a language into which a translation is needed for a national registration (such as Spanish for national registration in Spain). A further option is to choose a language into which a decent machine translation can be obtained. In these cases, the translation costs are not unnecessary high.

After the transitional period, the requirement for translation is abolished.