To UPC or not to UPC?

Unitary Patent – or Community Patent - has been subject to discussions for all my IP career, so for quite long. This summer it will finally become reality when the UPC finally enters into force. What is now needed from all EP patent holders and applicants, is to consider and decide whether they really want their IP assets to enter into this new era or not. There is now sunrise period ongoing, from 1st of March until 1st of June, to opt-out granted EP patents and published applications from the jurisdiction of UPC (Unitary Patent Court), if desired to be left out.

It is possible to opt-out your patents even after the sunrise period, during the transitional period of 6 years. However, if a third party has already brought an action before the UPC in respect of your patent, then it’s too late. So, in case your decision for some of your patents is definitely to opt out from the system, it is better to do opt-outs now, to guarantee that no one files proceedings against your patent via UPC once you’re opted-in.

Essentially, by entering into UPC your patent will be subject to potential centralized revocation by a third party. Unlike with EP patents, where each validated country has their own revocation proceedings, in UPC the process is centralized, and your patent could be invalidated in one proceeding. Vice versa, should you consider your patent be infringed by someone in Europe, you can yourself centralize the infringement proceeding via UPC.

I’ve attended few webinars related to this subject matter and read a bunch of newsletters from different patent agencies, and this is my summary of relevant aspects to be considered when making decisions.

Value of your patent

In case your patent is valuable for your own business, and it has been licensed in many UPC countries, you might want to consider twice to let the patent be subject to the centralized revocation proceedings by your competitors. Then again, if the value of the patent is more in third party use, you might want to get infringement proceeding and injunction for all UPC countries centrally handled by the Unitary Patent Court.

Scope of your patent

As a thumb rule, in case your claims are very wide, then your patent is more vulnerable to invalidation. In such a case, you might want to rather opt-out from UPC than opt-in. Vice versa, with very narrow claims your patent is probably less vulnerable to any annulment or invalidation proceedings, so safer to opt-in.

Validations of your patent

What is worth noting is that UPC does not cover all EU countries but only those 17 countries that have ratified the agreement. These are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. For all other countries, EPC convention remains to be applied. Should your patent be validated only in other EU countries than those belonging to UPC, then decision making is not relevant to you as UPC does not apply to them.

What changes in applying EP patents in the new system? You might be surprised to hear that the way patent applications are filed and prosecuted will not change in the new system. However, when your application reaches the grant phase, during the transitional period you can still decide whether you want the patent to be within the scope of EPC or UPC. What are the pros and cons for this decision making, in addition to aspects that were already explained in respect of centralized vs. national revocation process?

Costs

Unlike in EPC where the annual fees are paid to each and every validated country’s patent office, in unitary patent system only one annual fee is paid to EPO (so there is no separate Unitary Patent Office). In other words, only one payment, one currency and one regime, which makes the payment procedure simplified. The level of this single annual fee is the same as maintaining 3-4 national patents, so if you tend to validate your patents in more than 3 countries, it may be more cost-effective to opt the patent in as unitary patent.

Translations

For EP patents, you currently need to translate the claims to two official languages of the EPO, other than the language of the proceedings. In case you have filed your EP application in English, in grant phase you need to translate the claims to German and French. Also, you need to translate the claims to languages of your validated countries. However, in Unitary Patent system, during the transitional period, you have to also file one full translation of the patent specification into English, if the language of the proceedings was German and French, and in case the language of the proceedings was English, into any other official EU member state language. Interestingly, the latter requirement is not restricted to UPC countries. Now, depending on length of your specification (20 or 200 pages), this requirement may also increase costs.

What else? I cannot think of any other aspects now but in case you do, please share your thoughts - as applicant, patent owner, patent attorney, other...?