Venner Shipley’s Intellectual Property Magazine
Spring/Summer 2023
Unitary Patent and the Unified Patent Court Special Edition:
As the new system comes into effect on 1 June 2023, our Spring/ Summer 2023 edition focuses on the Unitary Patent and the Unified Patent Court
Page 3 A Word from the Editors – Peter Thorniley and Jan Walaski
Page 4 The Unitary Patent and Unified Patent Court – A Brief Introduction
Page 6 A New Europe? Which Countries are Covered by the New System?
Page 8 Is a Unitary Patent (UP) Right for You?
Page 10 Timeline to Unitary Patent Protection
Page 11 Opting-Out from the Unified Patent Court
Page 12 Understanding the Unitary Patent
Page 16 Supplementary Protection Certificates at the Unified Patent Court
Page 18 Understanding the Unified Patent Court
Page 22 The Judges of the Unified Patent Court
Page 24 Remedies at the Unified Patent Court
Page 27 Representation at the Unified Patent Court
Page 28 Revocation Actions at the Unified Patent Court
Page 32 The Unified Patent Court in Context – Comparisons with Procedure in England & Wales
Page 34 The Unified Patent Court and Unitary Patents – A Dramatic Change but Do Not be Blinded by the Light
Page 35 FAQs
We are an innovative intellectual property firm based in Europe. Our firm has a long history and a vast amount of experience in relation to all aspects of intellectual property.
As a concept, a single pan-European patent and a single court for litigation of European patents has been under discussion, in one form or another, for 50 years.
If you are operating in Europe and the protection and exploitation of IP is an important concern, it is crucial to understand what the impact of this new Unitary Patent (UP) system will involve, and we are therefore dedicating a whole Inside IP edition to the new system, which will come into effect on 1 June 2023.
The UP (sometimes referred to as a European patent with unitary effect) potentially offers cost and administrative savings for applicants wishing to obtain patent protection across the participating states. It is designed to be an additional option for innovators, to promote the use of the patent system, particularly among small and medium-sized enterprises, and (with the Unified Patent Court (UPC)) to facilitate enforcement of patents.
Patent litigation in Europe is also changing and Venner Shipley’s unique combination of skills and experience will provide clients with the support they need to effectively navigate a complex environment, blending both the existing practices at the European Patent Office and national courts, with the new UPC. With European patent attorneys across the United Kingdom and Germany and a core team of disputes specialists in London, we are a natural choice to support litigation strategy across Europe, both now and in the future.
If you have any further questions, or would just like to discuss more about the UP system, or anything else IP-related, please do not hesitate to reach out to us. We are, together with our colleagues across the UK and Germany, looking forward to seeing you soon and we are, as always, only an email or call away.
Peter Thorniley pthorniley@vennershipley.co.uk
Jan Walaski jwalaski@vennershipley.co.uk
1 June 2023 marks the formal start of a new era for patents in Europe, with the introduction of the separate, but related, UP and UPC systems. These are designed to further harmonise the patent landscape in those countries participating. Both systems represent post-grant options which supplement the existing procedures of the European Patent Office, rather than replacing them.
The UP will be an option after-grant for patent owners to obtain a single “unitary” right across 17 participating countries in place of the traditional national validations. The initial group of 17 participating countries compares with the 38 countries in total that are members of the European Patent Convention. A map of participating countries is presented on page 6, but notable countries which will be part of the system at the outset will include Germany, France, Italy, and the Netherlands, while notable absentees will include the United Kingdom, Spain, and Poland. The introduction of the UP does not affect procedure for countries that are not participating.
If you would have otherwise validated in four or more of the participating countries, the UP may be a cheaper option since it in theory simplifies the postgrant process and also reduces the number of ongoing annuities payable. On the other hand, if your current strategy involves validation in a smaller number of participating countries, the UP may represent a less expensive option for broadening the territorial scope of protection than had previously been available.
It will remain possible to choose to validate conventionally, both for countries within the system and those outside it. Thus, for example, a granted European patent application could be registered as a UP and additionally validated in the UK. Alternatively, the patent could be validated in the UK, France, and Germany only — this would be less costly but would result in less territorial coverage compared to the UP + UK option.
The UPC is a new court system designed to centralise patent litigation in those countries taking part. It will be the only court system applicable for UPs, but will also have a role for “classical” European patents (i.e. those validated in the traditional way) in participating countries.
This means that, regardless of whether you look to obtain UPs in the future, your existing portfolio will be subject to the UPC unless action is taken. For patentees nervous of this change, perhaps fearing the possibility of central revocation of their patents across the participating countries, there will exist an option to opt-out from the jurisdiction of the UPC. A sunrise period is now open to allow this to be done before the Court itself starts operating.
This map illustrates how the countries which are members of the European Patent Convention stand with regard to the Unitary Patent (UP) and Unified Patent Court (UPC) as it comes into effect. Those countries are divided into four categories as follows:
Taking part in the UPC and UP from 1 June 2023
Indicated an intention to join the UP and UPC in due course
Entitled to join the UP and UPC but are unlikely to do so for the foreseeable future
Outside of the European Union and therefore outside of the current framework of the UP and UPC
Austria Cyprus Croatia Albania
Belgium Czech Republic Poland
Iceland
Bulgaria Greece Spain Liechtenstein
Denmark Hungary
Estonia Ireland
Finland
Romania
France Slovakia
Germany
Italy
Latvia
Lithuania
Luxembourg
Malta
The Netherlands
Portugal
Slovenia
Sweden
GDP – (2021) USD trillion
Italy (UPC)
Spain (not participating in UPC)
The Netherlands (UPC)
Turkey (non-EU)
Switzerland (non-EU)
Poland (not participating in UPC)
Sweden (UPC)
Belgium (UPC)
Austria (UPC)
Ireland (not yet ratified UPC)
UK (non-EU)
France (UPC)
Montenegro
North Macedonia
Norway
San Marino
Serbia
Switzerland
Turkey
United Kingdom
Germany (UPC)
The benefit of a UP is that it will cover all participating countries at a significantly reduced cost in comparison with obtaining the same coverage through the classical, national validation system. However, in practice, few applicants choose to validate in all countries at the validation stage, so for many the advantages are best understood as the ability to obtain increased coverage for a relatively modest fee.
In considering the cost implications, it is important to recognise that costs occur both on a one-off basis (initially, when obtaining a UP or validating) and then subsequently, as renewal fees are paid each year that the patent is in force.
However, cost is not the only consideration. Once granted, a UP is somewhat less flexible than the alternative. In part, this is because
you do not have the option to “prune” some countries from coverage in due course in order to reduce renewal costs. Moreover, whereas classical validations give the patentee some choice about whether to use the Unified Patent Court (UPC) or to use existing national courts, UPs can only be litigated at the UPC — there is no opt-out for a UP.
It will remain possible to choose to validate conventionally, both for countries within the system and those outside it. Thus, for example, a granted European patent application could be registered as a UP and additionally validated in the UK. Alternatively, the patent could be validated in the UK, France, and Germany only — this would be less costly but would result in less territorial coverage compared to the UP + UK option.
Do you want wide geographical protection?
Do you want just a few UP countries, e.g. Germany and France ?
Do you want exactly four UP countries?
UP would be cheaper at grant stage and on renewals.
Classical validations would be cheaper at grant stage and on annuities, but coverage is limited.
Neither option is likely to have a significant cost advantage. Classical validations provide more flexibility to reduce annuity costs later. UP provides more coverage for a similar cost.
See other questions.
See other questions.
See other questions.
Do you specifically want to avoid the UPC?
Is the patent considered to be strong? That is, are you confident of its validity?
More likely to initiate infringement action (rather than respond to invalidity action)?
Choose classical validation since the UPC cannot be avoided with a UP.
You may be less concerned about the risk of central revocation at the UPC, so UP might be a good option.
Classical validations allow choice of UPC or national courts.
UP or classical validations would be fine.
UPC central revocation risk points towards classical validation, although opposition at the European Patent Office (EPO) still a possibility.
UP would mean that the UPC has exclusive jurisdiction for UP countries, so you would need to assert in the UPC.
The initial cost of “validating” a classical European patent in each country, and the cost of obtaining a UP, are driven in significant part by the translation costs. The UP will, for an initial period, require a translation of the full patent into another language (assuming the case was prosecuted at the EPO in English, this translation can be into any other European Union language) which means the initial cost is likely to be higher than in the many European countries which have now removed, partially or completely, translation requirements for validation. That said, other countries, such as Italy, do require a full translation of the specification on validation at present. Accordingly, the relative costs between the options
will be dependent on the size and complexity of the specification, as well as the countries chosen.
Recall as well that countries like Spain, Switzerland, and the United Kingdom will not be part of the UP, meaning that if protection is sought in these countries the usual procedures will be necessary, together with the UP procedure.
To compare the cost implications of obtaining a UP against classical validations, one needs to compare the renewal costs associated with the UP against those that would have been incurred had the patent been classically validated. Since classical validations will still be necessary for
those countries not taking part, only countries that are covered by the UP are required for the comparison. The chart below shows cumulative renewals incurred, illustrating that where the UP is to replace validation in only two or three countries, it is likely to be more expensive in terms of the official fees over time. However, once the UP covers four or more countries, it is likely to represent a reduction of costs.
Of course, the UP in fact covers a total of 17 countries (initially) and so any increase in costs should be understood in terms of this increased coverage. Alternatively, costs savings will be significant in comparison with strategies that currently lead to protection across a large range of countries.
Notification of Acceptance Rule 71(3) Communication
Deadline
4 months
Pay Grant Fee and File Claim Translations into French and German
1-3 weeks
Decision to Grant
3-4 weeks (unless Request to Delay Filed)
Grant (Publication of mention of Grant)
Deadline 3 months
National Validation Procedures vary by country
Deadline 1 month
Unitary Patent
• Request Unitary Patent
• File translation into another European Union language
With the advent of the UPC and Unitary Patent (UP), one of the first choices that will need to be made by those engaged in the European patent system is whether to opt-out their existing portfolios of patents and patent applications. This is because, absent action by the patent proprietor, the UPC will apply to existing European patents in the participating countries as well as UPs obtained in the future.
The effect of an opt-out will be to ensure that any litigation relating to those rights can only be initiated in the national courts, so preserving the existing position. If a patent is not opted-out by the time that the UPC system starts to operate, litigation may be commenced either in the appropriate national court or before the UPC, at the choice of the party initiating the litigation.
This means that a key decision that patent proprietors will need to make before the system even starts is whether to opt-out their existing European patents and patent applications from the jurisdiction of the UPC. Opt-outs will be possible in the sunrise period that began on 1 March 2023.
An important consideration in deciding whether to opt-out is the risk that a competitor could look to revoke existing European patent rights at the UPC. If avoiding this risk is important to you, you should consider optingout.
If you opt-out your patent or patent application, you can decide later to withdraw that opt-out to take advantage of the UPC if you so choose, as long as litigation has not been initiated before the national courts in the meantime. You cannot opt-out again after withdrawing a previous opt-out, however.
In terms of the practicalities, an optout can only be registered on behalf of, and with the authority of, all of the actual owners of the patent or published application, who may differ from the registered owners if changes
have not been recorded. The optout procedure requires a declaration that the patent owners listed in the opt-out application are entitled to be registered as such.
You should therefore ensure that ownership of any patents or patent applications to be opted out is clear, and that, where an opt-out is required, the owner, or joint owners of the patent or application, is/are in a position to authorise us to register the opt-out.
If you choose to go ahead, we will provide the necessary documentation to allow the owner(s) to confirm their ownership and authorise us to act in the matter. In order to execute the document, a list of the patents or patent applications to be opted-out will need to be completed. While our records may include some of this data, responsibility for completeness and accuracy of the data will lie with the owner(s), who have visibility of any transactions relating to the portfolio that they may have entered into.
Once the necessary documentation has been executed, we will record the opt-out with the UPC registry and report with confirmation that the optout has been lodged. The opt-out will be effective from the day it is recorded on the register, assuming that the details provided are accurate.
AuthorPeter Thorniley pthorniley@vennershipley.co.uk
An important consideration in deciding whether to opt-out is the risk that a competitor could look to revoke existing European patent rights at the UPC
the participating states.
It is designed to be an additional option for innovators, to promote the use of the patent system, particularly among small and medium-sized enterprises (SMEs), and (with the Unified Patent Court (UPC)) to facilitate enforcement of patents.
However, there are several aspects that limit the UP’s appeal, at least in its early stages. These include the limited number of states participating (the United Kingdom, Spain, and Switzerland, for example, are all outside the system), the risk of granted patents being revoked across all participating states, and the uncertainties that arise from a new, untested system.
The current European patent system with national validation (using, where applicable, the London Agreement) will continue to be available, as will national patent systems. These may be preferred options by some applicants, depending on their circumstances.
It is important to emphasise that both classical European patents and the new UPs will be prosecuted before the European Patent Office (EPO) using exactly the same procedures (search, examination, publication, etc.) up to the time of grant.
At this point the applicant will have the option to request UP protection for the participating states and/or to proceed with national validation in the normal way.
What will become the UP or European patent with unitary effect has been many years in the making. The two European Union regulations establishing the system entered into force in January 2013. However, 13 member states, including Germany, France, and Italy, had to ratify/accede to the Agreement on a Unified Patent Court (UPC Agreement) before the regulations could apply. Germany became the 17th member state to ratify the UPC Agreement in February 2023, meaning that it will enter into force on 1 June 2023.
The future
In principle, this means that a UP may be requested for any European patent granted on or after 1 June 2023. Ahead of that a sunrise period began on 1 March 2023 to permit opt-outs of existing rights.
Note that the EPO has introduced two transitional measures to support applicants seeking UP protection. As of January 2023, these procedures are now available for European patent applications for which a communication under Rule 71(3) of the European Patent Convention (EPC) has been dispatched and where the applicant has not yet replied.
The first measure enables applicants to file requests for unitary effect early (i.e. before the system officially starts), allowing the EPO to register unitary effect immediately at the start of the system assuming the patent grants after that date. The second measure allows applicants to request a delay in issuing the decision to grant, enabling them to keep open the option of requesting unitary effect when it becomes available.
As an EU project, the UP and UPC are in principle open to all 27 EU member states. But three countries (Croatia, Poland, and Spain) will not take part in the system, at least for now, so in practice it will cover up to 24 EU member states (see the map on page 6/7).
The UP (sometimes referred to as a European patent with unitary effect) potentially offers cost and administrative savings for applicants wishing to obtain patent protection across
However, a UP will only be available for those member states that have ratified the UPC Agreement at the point of grant. To date, these are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
This means that UPs granted from day one will have unitary effect for these 17 countries. If protection for other countries (including non-EU countries such as the UK, Switzerland, and Norway) is sought, they must be selected and validated in the normal way. Since UPs are an add-on to the current system, it will also remain possible to validate patents in the participating states in the usual way instead of obtaining a UP.
If more EU member states ratify in future, then geographical coverage of UPs granted after that point will increase. However, note that it will not be possible to extend the scope of a UP once it is granted.
This will be important for anyone conducting freedom to operate searches – the countries covered by a specific UP will depend on which states had ratified the UPC when it was granted.
Prosecution of European patent applications up to grant is unchanged by the new system. As such, to secure a UP, an applicant must obtain a European patent by filing an application at the EPO, which will be examined in the normal way. Once the application is granted, the proprietor will file a “request for unitary effect” within one month to obtain a UP. European patent attorneys from any
EPO contracting member state (i.e. not only those from states participating in the UP) will be able to act as representatives both up to grant and for the process of requesting unitary effect.
To be eligible, the European patent must have been granted with the same set of claims in respect of all the participating member states.
The decision about requesting unitary effect does not need to be made until the point of grant and applicants can therefore keep their options open during the examination procedure.
The decision may be influenced by the nature of the technology, geographical scope, budget, and commercial prospects.
There are many possible strategies, for example:
• Maximum coverage for lowest cost – in this situation, it would make sense to have a UP plus national validation in some or all of the remaining EPC states (but this strategy also brings the risk of central revocation of the UP).
• Key markets only – if protection is sought in five key markets, such as France, Germany, the Netherlands, Switzerland, and the UK, then national validation might be preferred to the UP as only the first three of these would be covered by the UP.
• Mixed approach – UP protection could be requested, alongside national validation for other key markets, for example UP plus Spain plus UK to give protection in 19 countries in total.
These examples focus on the cost of renewals, but other factors will also be at play. For example, once a UP is obtained it falls or stands as one. This means that down the line a proprietor will not have the option of reducing costs by “pruning” one or more countries from coverage, and also that a UP is at risk of central revocation in a single action before the UPC.
There is no official fee for a request for unitary effect. However, all the fees relating to grant of a European patent will have to be paid to the EPO as normal. Moreover, during an initial transition period, there will be a cost associated with the filing of a translation of the patent into a second language.
There will be a single renewal fee for UPs, which will be administered by the EPO, instead of national renewal fees paid to national offices. This promises significant savings over the life of a patent, as well as greater administrative simplicity.
The UP official renewal fees were calculated based on the top four countries (which, at the time of calculation, included the UK). See the table below.
Other things being equal, the cost of renewing a UP should therefore be lower than using the existing system when the European patent is validated in four or more participating states. However, note that it is an all-ornothing system – it is not possible to “prune” costs by dropping countries from the UP during its lifetime.
Renewal fees in any other EPC states must be paid additionally in the normal way. Therefore, the extent of any savings made by using the UP will depend on the total number of countries in which protection is sought, as well as the expected lifetime of the patent.
One of the aims of creating the UP system is to simplify the currently burdensome requirements for translation of European patents. Ultimately, no manual translations will be required for UPs as machine translations are expected to be good enough.
However, in the inevitable compromises that led to the regulations, a transitional period was agreed which will last for at least six (and up to 12) years. During this period, one full translation of the UP specification must be filed, in addition to the translation of the patent claims required at the end of the grant procedure.
Where the language of the proceedings is English, the translation must be into any of the 23 other official languages of the EU. Where the proceedings are in French or German, the translation must be into English. This translation is for information only and has no legal effect.
There is a compensation scheme to help with translation costs. This is available to small and medium-sized enterprises , natural persons, nonprofit organisations, universities, and public research organisations in the EU filing in a language other than English, French, or German. It is set at €500.
Note that the London Agreement continues to apply for national validations of European patents in contracting states, and offers significant savings on translation requirements in those states. Therefore, applicants will need to weigh up carefully the cost benefits of the UP compared to European patents validated using the London Agreement, particularly where protection is only needed in a small number of participating states.
The EPO will maintain a Register for Unitary Patent Protection (Register). This is expected to be simpler to use than multiple national systems.
The Register will include legal status information on licensing, transfer, limitation, revocation, and lapse of UPs. It will also be the authoritative source for information on the coverage of each UP, as this will depend on which countries had ratified the UPC Agreement at the time of grant.
The Register is expected to be publicly accessible online and easy to access.
UPs will be enforced in the new UPC. Harmonised enforcement in the UPC aims to simplify procedures, reduce costs, enhance legal certainty, and eliminate conflicting decisions.
Patent proprietors will have the certainty of knowing that UPs will always be litigated in the UPC rather than a patchwork of national courts, as at present, and that decisions of the Court will apply across all participating states.
However, note that the UPC will have jurisdiction over both validity and infringement. This means that a central revocation action can be brought against a UP at any point during its life from grant to expiry.
The UPC therefore provides a new opportunity to centrally revoke a UP after the nine-month opposition period has expired.
The interaction between the UPC and EPO opposition proceedings will be closely watched. The UPC will not normally stay proceedings where an opposition is pending, unless a decision is expected quickly.
There are likely to remain several reasons why parties will want to file oppositions, including the opportunity to knock out a European patent in full (not just that part of it covered by the UP), the lower fees compared to the UPC, and familiarity with a tested system.
Decisions about challenging UPs will therefore need to be considered carefully, taking into account the different options available, timing, and costs, as well as the particular issues related to the technology and business.
There is a potential gap in protection regarding SPCs which are available for pharmaceutical and plant
Review pending applications at EPO and decide if any are appropriate to seek for unitary effect
Consider whether to file an early request for unitary effect for any applications nearing grant
Put in place systems to monitor requests for unitary effect by competitors
Review budgets and filing/opposition strategies based on latest information
protection products in the EU and are administered nationally.
The European Commission plans legislation to introduce a “unitary SPC” to complement the UP. It proposes to create a regulation to achieve this and held a consultation in spring 2022. Further announcements are expected soon.
Patent applicants will now be able to obtain Unitary Patents for any pending European patent application. The EPO has provided transitional measures to permit an early request for a Unitary Patent, as well as to delay grant, once the applicant has received a Rule 71(3) communication (Notice of Allowance).
Therefore, it is important for patent applicants and third parties to be well prepared in order to make decisions. This includes deciding whether to seek unitary effect for EP applications approaching grant; choosing whether to take advantage of the EPO transitional arrangements; monitoring what competitors are doing; and planning opposition/revocation strategies if applicable.
Author Peter Thorniley pthorniley@vennershipley.co.ukSPCs apply to specific pharmaceutical and plant protection products that have been authorised by regulatory authorities, such as the European Medicines Agency. SPCs aim to offset the loss of patent protection caused by the compulsory lengthy testing and clinical trials associated with these products. The European legislation is mirrored in United Kingdom law, providing legal basis for SPCs in the UK.
When the UPC opens its doors on 1 June 2023, starting a new chapter in the European patent system, the effect on SPC practice will be immediate. The UPC will be able to make infringement and validity decisions in relation to SPCs where the basic patent is subject to the UPC’s jurisdiction – Article 32 of the Agreement on a Unified Patent Court (UPC Agreement) explicitly provides for this. As the goal for the UPC is harmonisation of postgrant issues across UPC participating countries, the UPC may eventually become responsible for all postgrant issues relating to SPCs in UPC participating countries.
At present, there is no centralised body or system for granting “unitary SPCs”. The examination and grant of SPC applications is undertaken by national patent offices, leading to national SPCs. This system will continue until a centralised body or system exists.
The current system of pursuing SPCs nationally leads to high costs and considerable administrative burden.
Additionally, national patent offices are not always consistent in their application of SPC law, which leads to potentially divergent outcomes across offices and a lack of legal certainty. Thus, there is growing interest in a centralised body or system for granting “unitary SPCs” to harmonise the approach to examining SPC applications.
What form a “unitary SPC” will take and how “unitary SPC” applications might be examined and granted is still under consideration. For example, the system could mimic the European Patent Office (EPO), where patent applications are examined and granted centrally before leading to a bundle of national patents and now, possibly, a Unitary Patent following grant. Alternatively, a “Unitary SPC Office” could be created with the sole purpose of examining and granting “unitary SPCs”. The EPO, or another existing organisation such as the European Union Intellectual Property Office, could therefore become responsible for the examination and grant of SPC applications or a wholly new organisation might need to be created.
A “unitary SPC” is still very much at the concept stage so major considerations such as who will examine and grant SPC applications, which countries would be in scope of a “unitary SPC”, and who will have jurisdiction over post-grant issues, such as enforcement and validity, remain open.
Until a “unitary SPC” exists, the only route to an SPC is via national patent
offices. Thus, the decision to refuse or grant an SPC application remains with the national patent offices. The UPC now provides the option of litigating an SPC either nationally or in the UPC, if the basic patent is subject to the UPC’s jurisdiction. It should be noted that the SPC system contrasts with the patent system where a patent examined and granted by a national patent office in a UPC Agreement member state is not under the jurisdiction of the UPC, but there is the option of a national SPC to be under the jurisdiction of the UPC. A “unitary SPC” could potentially remove this split.
While SPCs were created by EU legislation, this legislation is now part of UK domestic legislation. SPCs are therefore obtainable in the UK. Since the UK, like a number of other countries illustrated on the map on page 6/7 is not a participant to the UPC Agreement, UK SPCs, and equivalent rights in other non-participating countries, will therefore not be subject to the UPC’s jurisdiction.
Author Martin Crow mcrow@vennershipley.co.uk
Crucially, the UPC will be the forum for both UPs and classical European patents (and supplementary protection certificates based on them) in the participating states.
The UPC will provide parties with decisions, and remedies, that apply across all the participating member states.
When it comes to European patents in the participating countries, however, during the transitional period actions can still be brought before national courts.
European patents (but not UPs) can also be opted-out of the UPC during the transitional period.
The benefits promised by the UPC include simpler, cheaper resolution of patent disputes in Europe, without duplication of proceedings or the risk of conflicting judgments. The Court will have dedicated judges who will have (or develop) expertise in patent law. There are also some specific benefits in terms of reduced fees for small and medium-sized enterprises.
As with the UP, there are also a number of risks and unknowns that need to be factored in – both for patent proprietors and potential defendants. These include uncertainty about how a new court will operate, the risk of central revocation of a UP in the Court, the possibility of an injunction that covers all the participating states, and the possibility that damages awards will be more (or less) than anticipated.
In addition, the advantages of harmonisation and reduced duplication will be limited insofar as key jurisdictions – notably the United Kingdom – will be outside the system.
Many European patent proprietors may feel that, at least in the short term, the risks outweigh the benefits. If that is the case, they can opt-out their European patents from the UPC. This will ensure that these patents will continue to be litigated before national courts, as they are today, unless the proprietor later chooses to opt back into the system. Opt-outs can be registered while an application is pending, as well as after the patent is granted.
Opting-out your European patents effectively protects them from central revocation at the UPC. Whether or not to opt-out is therefore the most important decision to take at this stage. As mentioned above, it is not possible to opt-out UPs.
Patents granted by the various national patent offices in Europe will remain within the jurisdiction of national courts and will not be affected by the UPC.
The UPC, like the UP, will start on 1 June 2023.
Preparations for the Court are already underway, during what is known as the Provisional Application Period – these include the appointment and training of judges, the setting up of the Court’s IT systems, and budget planning.
The Provisional Application Period started on 19 January 2022, following Austria’s ratification of the Protocol on the Provisional Application of the Agreement on a Unified Patent Court and was initially expected to last for at least eight months.
Note that certain actions may need to be taken before the formal launch of the UPC. In particular, you can file requests to opt-out European patents during a sunrise period which will be in force for three months prior to the official start date of the system, so from 1 March 2023.
The possibility to opt-out European patents will continue until one month prior to the end of the transition period, which is separate to the sunrise period and is due to last seven years. The transition period may be extended for a further seven years.
The UPC complements the Unitary Patent (UP) system and shares its aims of improving and simplifying patent protection in the European Union.
There are currently 17 countries participating in the UPC: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
If further EU member states ratify the UPC, the reach could extend to 24 countries covering a market of some 400 million people. Croatia, Poland, and Spain are not expected to be part of the new system for the foreseeable future. Non-EU countries cannot join it either.
In practice, therefore, a proprietor of a UP will be able to bring an action before the UPC and seek remedies for infringement (such as injunctions and damages) covering at least 17 and up to 24 countries, depending on the number of UPC ratifications at the time the patent was granted. A proprietor of a classical European patent in some or all of those countries may also bring a single action to enforce the patent at the UPC rather than going separately to different national courts.
Conversely, a third party can bring an action to revoke a patent in the same countries.
In either case, separate actions would have to be brought for any nonparticipating countries, such as Spain, the UK, Switzerland, and Norway.
Although the UPC is one Court, it is made up of a mix of local, regional, and central divisions, a Court of Appeal, Mediation and Arbitration Centre, and a Registry.
The primary role of local and regional divisions will be to hear infringement disputes at first instance. Invalidity counterclaims will also therefore start at the local and regional divisions, although they will not always be heard in full there.
The following member states have stated that they intend to set up local divisions: Austria, Belgium, Denmark, Finland, France, Germany (which will have four local divisions), Italy, the Netherlands, Portugal, and Slovenia. Sweden will host a Nordic-Baltic regional division.
The central division will be split between Paris, France and Munich, Germany. It will have jurisdiction over declarations of non-infringement and revocation.
The central division in Munich will hear mechanical engineering cases with other technologies going to the central division in Paris. (London was to host a third branch of the central division, for cases involving human necessities, pharmaceuticals, and
chemistry before the UK pulled out of the UPC – these cases will now go to Paris unless/until a third location is determined).
It will be possible to transfer cases between local and central divisions, for example where a revocation counterclaim is brought in the central division, where multiple actions have been brought before different panels of judges concerning the same patent, or where the parties agree to transfer.
Appeals against first instance decisions can be brought before the Court of Appeal, which will be in Luxembourg. Questions relating to EU law can be referred to the Court of Justice of the EU, although this is likely to be rare as very few provisions of EU law affect patents.
The Mediation and Arbitration Centre will be split between Lisbon, Portugal and Ljubljana, Slovenia. There will be a Registry , responsible for administering cases, and sub-registries in each division.
In local and regional divisions, the language of proceedings will be one of the official languages of the hosting member state or one of the three
official European Patent Office (EPO) languages or (subject to the parties’ agreement) the language of the patent.
In the central division, it will be the language of the patent. The Court of Appeal will use the language of first instance, or another language agreed by the parties.
In practice, English is expected to be used in the majority of cases.
The UPC will comprise legally qualified and technically qualified judges from the participating states. Judges may be full-time or part-time. Legally qualified judges will be comparable to judges in participating member states and may also sit in national courts. Technically qualified judges will have technical expertise and are likely to be patent attorneys or other IP specialists.
The system is designed to promote consistency and fairness, to provide a mix of legal and technical expertise, and to avoid “home advantage”, or the perception of it. The early cases brought, including any appeals, will demonstrate to what extent it achieves these aims.
Patent proprietors may therefore consider that having at least some of their patents inside the system will provide an opportunity to shape the Court’s jurisprudence and resolve issues that are of particular interest to them.
As far as possible, UPC cases will be managed electronically. Statements or applications will be filed at a subregistry of the Court and should include all relevant information.
and the uniformity of rules and jurisprudence, it remains to be seen whether this laudable aim can be realistically achieved.
Actions for revocation or noninfringement will normally be brought before the central division. The exception is where an infringement action between the same parties and relating to the same patent has already been filed, in which case the revocation action may be brought before the relevant local/regional division.
If a counterclaim for revocation is filed, there are various possibilities – the case could stay in the local/ regional division, the revocation claim only could be referred to the central division, or the whole case could go to the central division. The second option raises the possibility of bifurcation, something which is familiar from German patent litigation – the Court will have discretion to stay proceedings in such cases.
Judges will sit in panels. At first instance, the panel at a local or regional division will normally comprise three legally qualified judges, plus (if required, for example if validity is in issue) a technically qualified judge. In the central division, there will be two legally qualified judges and one technically qualified judge.
The Court of Appeal will have panels of five judges (three legally qualified and two technically qualified).
In each case, the panel will be multinational. For example, a panel in the Munich local division may comprise two German judges and one from another country. The three legally qualified judges on a Court of Appeal panel will each come from a different country.
In first instance cases, if the parties agree, the case can be heard by a single judge.
There are detailed provisions regarding the division in which cases can be brought. Essentially, claimants should bring cases before the local or regional division where the alleged infringement occurred, or where the defendant has its residence or place of business. In certain cases, notably where the defendant has no presence in a UPC member state or where the parties agree, infringement actions can be brought before the central division.
If the alleged infringement takes place in more than one country, or there is more than one defendant, the claimant will be able to choose where to bring the case. This provides for the possibility of forum shopping – while the UPC website claims that forum shopping will be minimised by the equal competence of all divisions
The proceedings will comprise written submissions from both parties, followed by interim conferences with the parties (if required). The judge rapporteur may order parties to produce further information or evidence at the interim conference, but there will be no cross-examination of witnesses at this stage.
The oral part of the proceedings is expected to be limited and should normally be completed within one day. Witnesses can be heard during the oral procedure – they will be questioned by the panel and, at the presiding judge’s discretion, by the parties.
The UPC aims to issue written decisions in cases within six weeks of the oral hearing.
Certain matters will be outside the jurisdiction of the UPC and will still be determined by national courts under national law. These include disputes over ownership of patents and the terms of licences.
Those familiar with litigation in Europe will recognise that the UPC is a hybrid
The system is designed to promote consistency and fairness, to provide a mix of legal and technical expertise, and to avoid “home advantage”...
system, incorporating elements of both continental-style written procedures and UK-style hearings, with a tilt toward the former approach. Familiarity with written procedures (such as EPO opposition proceedings) may be particularly useful for parties and their representatives in actions before the UPC.
Despite the detailed rules, judges will have some discretion over issues such as time limits, witnesses, and remedies. Only once the first cases have been completed will we have a better understanding of how the Court will work in practice.
Moreover, it is likely that many of the early cases will be appealed, and the Court of Appeal will play a significant role in harmonising procedures between divisions.
The UPC will be able to grant interim measures, including: to preserve evidence and inspect premises (akin to the saisie-contrefaçon found in many European countries), to order the production of evidence, to make freezing orders, to grant interim injunctions, and to order seizure or delivery up of suspected infringing products.
If seeking interim measures, claimants will need to satisfy the Court that their rights are being infringed, or that infringement is imminent.
The Court will ordinarily hear from the defendant before granting interim measures, unless the delay will harm the patent proprietor or there is a risk of evidence being destroyed.
There are fixed and value-based fees for UPC proceedings, the levels of which were set in 2016 and may be subject to revision in the near future.
Fixed fees (for example, €11,000 for an infringement action or counterclaim and up to €20,000 for a revocation action) apply to all cases. There is a full and detailed list of fees for all the possible actions.
Value-based fees apply to infringement, non-infringement, and damages actions. They range from €0 for cases with an estimated value of €500,000 and under, up to €325,000 for actions of more than €50 million.
Small and micro-entities will get a 40% reduction in court fees. There will also be discounts where a single judge is used instead of a panel, and where cases are withdrawn or settled early. Natural persons may be able to obtain legal aid.
The fees will be reviewed on a regular basis once the UPC is up and running. In principle, court costs and representation costs can be recovered by the winning party. However, there are limits on the amount that can be recovered and judges have some discretion regarding recovery of costs.
For most patent proprietors, the most pressing action relating to the UPC will be to decide whether to opt-out
some or all of their existing European patents. We are now in the sunrise period during which opt-outs are possible before the Court opens its doors on 1 June 2023.
During the sunrise period, many companies will want to monitor what actions their competitors are taking regarding opt-outs, particularly if there is the possibility of filing a revocation action at some point.
Once the Court is properly up and running, parties will be able to bring cases either to enforce UPs and European patents in the participating states or to seek central revocation. If seeking revocation, there may be strategic decisions to be made about the UPC action and EPO opposition proceedings (or indeed both) if the patent is still within the nine-month opposition window.
In all cases, careful preparation should be undertaken before action is taken. The advantages of bringing an early action before the UPC include the opportunity to shape the system and establish precedents. The disadvantages include the unpredictability of a new system and with that the potentially significant effect of an adverse decision having such broad territorial coverage.
Author Peter Thorniley pthorniley@vennershipley.co.ukThese founding judges will have a significant impact on the development of the system, from defining how successfully the Court meets its commitment to procedural speed to how commonly injunctions, both interim and final, are obtained. It seems inevitable that the nationality of the judges will play a part in this, since it defines the frame of reference under which individuals are used to working. However, one can also expect judges to take advantage of the freedom they now have to move beyond the well-
established constraints of existing national procedure. The judicial body of this self-funding system will be strongly motivated to show its value.
A key part of the judicial system at the UPC will be that judges will, as a default position, be organised into panels of three (or more). Where validity is at issue, a technically qualified judge will join the panel to supplement the expertise of the so-called “legally qualified” judges. Of course, all judges will have legal experience, but the
Regional and local divisions at first instance will have an element of local character driven by the identities of the judges involved. However, the degree of local character will vary, in no small part because only the local divisions in Germany, Italy, the Netherlands, and France will sit with panels comprising two local judges. Elsewhere, a single local judge will be supplemented by (at least) two judges from a central pool.
technically qualified judges will be chosen according to their scientific/ engineering background, while the legally qualified judges will be drawn from the judiciary of the participating countries.
85 judges have been appointed so far, and 51 of these are technically qualified judges. These technical judges are drawn for the most part from private practice patent attorneys throughout the participating countries.
Local division Judges
Austria (Vienna) Mr Walter Schober (AT)
Belgium (Brussels) Mr Samuel Granata (BE)
Denmark (Copenhagen)
Local division Judges
The Netherlands (The Hague)
Germany (Munich)
Mr Edger Brinkman (NL) Ms Margot Kokke (NL)
Mr Tobias Pichlmaier (DE) Mr Matthias Zigann (DE)
Post to be filled
Finland (Helsinki) Mr Petri Rinkinen (FI)
Portugal (Lisbon) Ms Rute Lopes (PT)
Slovenian (Ljubljana) Ms Mojca Mlakar (SI)
Munich Ms Mélanie Bessaud (FR)
Ms Ulrike Voß (DE)
Paris Ms Florence Butin (FR)
Mr Paolo Catallozzi (IT)
Mr Maximilian Haedicke (DE)
Germany (Düsseldorf)
Germany (Mannheim)
Ms Bérénice Thom (DE) Mr Ronny Thomas (DE)
Mr Holger Kircher (DE) Mr Peter Michael Tochtermann (DE)
Germany (Hamburg) Ms Sabine Klepsch (DE) Mr Stefan Schilling (DE)
Italy (Milan) Mr Pierluigi Perrotti (IT) Ms Alima Zana (IT)
France (Paris) Ms Carine Gillet (FR) Ms Camille Lignieres (FR)
Post to be filled
Ms Tatyana Zhilova (BG)
Post to be filled
The central division is split into three parts, originally including London, United Kingdom, Paris, France, and Munich, Germany, although London is now likely to be replaced in due course by Milan, Italy. At present, however, it is only certain that Paris and Munich will be seats of the central division.
The legally qualified judges appointed to the Court of Appeal, which sits in Luxembourg, are as follows:
• Ms Françoise Barutel (FR)
• Mr Peter Blok (NL)
• Mr Klaus Grabinski (DE)
• Ms Emanuela Germano (IT)
• Ms Patricia Rombach (DE)
• Ms Rian Kalden (NL)
• Ms Ingeborg Simonsson (SE)
The international judiciary of the UPC will have the opportunity to shape patent law in Europe for many years to come, and every move they make will be monitored closely for signs of how this may develop.
Author Peter Thorniley pthorniley@vennershipley.co.ukHere we provide a brief summary of the provisional and protective measures, injunctions, and final remedies available before the UPC, and discuss how parties concerned about potential infringement actions may be able to improve their position.
Under Article 32(1) of the Agreement on a Unified Patent Court (UPC Agreement), the UPC has “exclusive competence” in respect of “actions for provisional and protective measures and injunctions”. These provisional measures provide interim remedies for parties, including the possibility of preliminary injunctions, and are available even before the commencement of proceedings on the merits of a case. That being said, the measures are time limited, so applicants will need to act quickly. An
the Court that the applicant’s right is being infringed, or that infringement is imminent. Moreover, the applicant will need to provide reasonable evidence to satisfy the Court that the patent in question is valid. Useful evidence in this regard could include an indication that the patent has been maintained in European Patent Office opposition proceedings (as is sometimes used in German litigation), though the practice of the Court in regard to such evidence has yet to be established.
The Court will use its discretion in granting preliminary measures. In making its decision, the Court will weigh up the possible harm that could result to either party if the measures are granted or refused ahead of full infringement/invalidity proceedings.
It is important to note that provisional measures (including a preliminary
In view of the evidentiary requirements, convincing the Court to exercise its discretion and make an ex parte order could be a high hurdle for the applicant to jump. Granting of an ex parte order is most likely to occur in instances where delay is likely to cause irreparable harm to the applicant, or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available. However, where an order is made ex parte, the parties affected must be given notice of the order at the time of the execution of the measures at the very latest.
action leading to a decision on the merits of the case must be brought within 31 calendar days of the order (or within 20 working days, if longer). If no action is filed within that time, the measures cease to have effect and the applicant may be ordered to pay compensation.
In order to obtain a preliminary injunction or other provisional measure, the applicant will need to provide reasonable evidence to satisfy
injunction) may be ordered ex parte, i.e. without the other party having been heard. For provisional measures to be issued ex parte, the applicant will need to provide reasons for not hearing from the other party and disclose information about any prior correspondence between the parties. The applicant also needs to disclose any other pending proceedings regarding the patent and any previous, unsuccessful, attempts to obtain provisional measures.
In addition to preliminary injunctions, the provisional measures available at the UPC include some powerful evidence gathering measures, such as orders to produce or preserve evidence, inspections of premises, freezing orders, and the seizure of products.
In the context of provisional measures, particularly ex parte ones, the UPC also provides a protective framework for parties through the use of protective letters. Any party believing it might be the subject of an application for ex parte provisional measures can pre-emptively file (for a small fee) a
While many of the remedies available at the UPC will be familiar to patentees, the size of the market covered by the UPC member states and subject to the jurisdiction of the UPC provides interesting opportunities for those looking to enforce their rights in Europe.
Useful evidence in this regard could include an indication that the patent has been maintained in European Patent Office opposition proceedings...
protective letter with the Court giving reasons for lack of infringement and/ or invalidity in the patent. In this case, if the patentee subsequently applies for an ex parte provisional measure, the expectation is that the Court will hold a hearing with both parties before making its decision on whether to grant the application for provisional measures.
Although one strategy might be to pre-emptively file protective letters on multiple patents just in case an application for provisional measures is made, it is important to note that the protective letter will be removed from the register after six months unless an application for an extension is filed and an extension fee is paid. This extension mechanism could prove costly, both financially and from an administrative standpoint, meaning protective letters are probably not a realistic tool to deploy portfolio-wide. However, in situations where there is an actual indication that another party might be intending to apply for provisional measures in Europe, parties may want to consider filing protective letters with the UPC.
Where a full infringement action is brought and the UPC finds infringement during the subsequent proceedings, final remedies are available to the patentee. On the flip side, if it is found that there was no infringement or threat of infringement of the patent, the patentee may be ordered to pay compensation for harm arising from any provisional measures that were granted.
The winning party may also apply for recovery of reasonable and proportionate legal costs (though recovery is subject to a sliding scale based on the value of the action and is at the discretion of the Court).
The final remedies available upon a finding of infringement include a permanent injunction and monetary damages (the calculation of which includes various factors, including whether or not the infringement occurred knowingly). The determination of damages may be subject to separate proceedings, and the winning party has one year from
the date of the decision to lodge an application for the determination of damages. In addition, various other corrective measures may be ordered by the Court, such as the recall or destruction of the infringing products, and a declaration of infringement.
Although these remedies are not necessarily new, their cross-border nature is. Injunctions in respect of a European patent with unitary effect (or Unitary Patent) cover all UPC contracting states, while injunctions of a classical European patent cover all countries where that European patent has effect (i.e. all the countries in which it was validated, provided those countries are part of the UPC Agreement). Damages could also be significant, given the size of the markets under the jurisdiction of the Court. This potential for remedies with wide territorial coverage makes infringement actions at the UPC an interesting new tool for enforcement in Europe.
Author Alexandra Seymour Pierce aseymourpierce@vennershipley.co.uk
The rules around representation at the UPC have been established with a view to giving parties a broad range of options, recognising in particular that the strength of the patent profession in the United Kingdom remains a valuable asset to the nascent system, notwithstanding that the UK will not itself be participating.
In order to provide a cost-effective forum and to take advantage of existing expertise in Europe, it has always been considered desirable that European patent attorneys should have a role representing clients at the UPC, together with those nationally qualified lawyers entitled to represent clients in the courts of the participating countries. Nevertheless, qualification as a European patent attorney focuses on procedure at the European Patent Office (EPO) rather than litigation before the courts and in recognition of this the Agreement on a Unified Patent Court establishes that European patent attorneys should demonstrate their suitability to practice at the court either through a European Patent Litigation Certificate (EPLC) or in another way.
Many European patent attorneys are in fact dual-qualified, holding specific national qualifications as well as the right to practice before the EPO. The relevant levels of training differ between member states. In the rules ratified by the Administrative Committee, the skills of both the UK and German professions are recognised, and qualifications commonly held by European patent attorneys in those countries are included in the list of those considered sufficient to allow entry on the list of professional representatives before the UPC during an initial period. In future, it is expected that European patent attorneys looking to build a practice before the UPC will qualify by undertaking the EPLC.
This means that Venner Shipley’s European patent attorneys in both Germany and the UK will be entitled to represent clients before the UPC from day one. The UK’s non-participation in the UPC does not limit the right of UK-based European patent attorneys to serve their clients in this way. The members of Venner Shipley’s specialist litigation team will also be on hand to provide their experience and expertise in any matter we handle before the Court.
Author Peter Thorniley pthorniley@vennershipley.co.ukAn initial decision for any party looking to take advantage of the UPC will be to build the right team of professional support.
Venner Shipley’s European patent attorneys in both Germany and the UK will be entitled to represent clients before the UPC from day one.
Any patent granted by the EPO, whether a Unitary Patent or not, can, subject to the opt-out provisions, be attacked centrally in a UPC revocation action. This means that if a claimant is able to persuade the Court that the patent lacks validity, it will be revoked across the 17 countries participating in the UPC in one fell swoop. A decision of this weight is likely to be of significant influence even in those countries that are outside the UPC for now.
This is not entirely new to European procedure – the ability for third parties to revoke a European patent across all states has up until now been provided by Opposition procedure at the EPO. However, Opposition is significantly time-limited – any Opposition must be filed within nine months of grant. After that window, patents could be revoked in the national courts, but the limited effect of an individual national decision, together with significant variation in costs, timeline, and procedure, means that this option is of limited utility.
Any person “concerned by a patent” may bring a revocation action at the UPC. While not as liberal as EPO Opposition procedure – which allows parties to bring actions anonymously, naming a “straw man” rather than identifying themselves – there is no requirement to demonstrate an active conflict in order to have standing.
Under the UPC, revocation actions are to be brought at the central division and brought in the language of proceedings. The central division is itself split between Paris, France and Munich, Germany at present, with the strong suggestion being that a further branch will be established in Milan, Italy as the UPC opens. However,
hearings in person at the division are expected to be limited, so the precise location matters less perhaps than the judges chosen.
In this respect, it is worth noting that the usual provision will be for cases to be heard before a three-judge panel. In the case of revocation actions at the central division, this panel will comprise two legally qualified judges and one technically qualified judge. The two legally qualified judges must be multinational, and the current pool consists of judges with significant experience at national level – the majority of the pool of technically qualified judges are drawn from private practice patent attorneys. This latter group is likely to have EPO Opposition procedure as a strong reference point, while the multinational nature of the panel will ensure that no local tradition will dominate.
Nevertheless, each panel will be chaired by a legally qualified judge, and the role of the judge rapporteur is also reserved for a legally qualified member of the panel.
A simplicity of Opposition procedure is that the EPO has a focused role, since it is only able to offer decisions on the validity of patents. The UPC of course is a general patent court, and therefore capable of handling a range of applications, not least infringement actions.
When a revocation action is initiated at the UPC, the defendant/patentee has the opportunity to counterclaim for infringement. Such a counterclaim would be heard in the central division together with the revocation action. However, more complex scenarios arise if an infringement action is
launched not as a counterclaim but independently.
The Agreement on a Unified Patent Court provides that if an action for revocation is pending before the central division, an action for infringement between the same parties relating to the same patent may be brought before any relevant local/ regional division (or before the central division). If the patentee chooses to go to a local or regional division, that division then has discretion as to how the cases are joined, if at all. This is a route to potential bifurcation of the proceedings at the discretion of the local/regional division, and could also be a route to the local/regional division assuming responsibility for the revocation action from the central division.
However, this provision applies to an action between the same parties. If an infringement action is brought against another party, then, again, the patentee will have discretion as to their chosen division. However, whether those actions will be joined is controlled by the Rules of Procedure, which refer to the opportunity for disparate panels to join actions relating to the same patent “by agreement”. As such, in this case, the discretion no longer lies with the local/ regional division themselves, but is shared between the two panels acting on the patent. Since the agreement of both panels is required for the case to be joined, this perhaps means there is less likelihood of the actions being joined.
During the transitional period, additional complications arise in the relationship between infringement actions brought before the national courts and revocation actions at the UPC. Infringement and revocation are different causes of action under the
The advent of the UPC offers those with an interest in the European intellectual property landscape an additional option to explore the validity of patents granted by the European Patent Office (EPO).
Brussels regulation, so it is in theory possible that parallel actions may proceed simultaneously in different court systems, especially if there is a difference in the parties involved. Nevertheless, it might be expected that if a revocation action before the UPC is somewhat advanced, a national court might use its discretion to stay infringement proceedings on the same patent until a decision is reached.
UPC actions of all kinds are generally structured as a three-stage procedure. First, an exchange of written pleadings during the written procedure, then an interim procedure during which one judge of the panel (the judge rapporteur) is charged with distilling the issues raised in order that the final stage, the oral hearing, may be dealt with efficiently and swiftly.
Written procedure at the UPC follows an A-B-A-B process, with each side given two opportunities (by default, if necessary the judge rapporteur can provide for more) to make submissions. Importantly, this applies to any action, so if one party introduces a further claim (e.g. a counterclaim for infringement in the case of a revocation action) a further process is initiated. However, the timelines run in parallel, and this means that, in order to comply with the overall time frame, time is squeezed for those matters.
In the illustrated example timeline below, it is assumed that no counterclaim for infringement is made. However, even with this assumption, it is very likely that the patentee will
consider an application to amend the patent, meaning that the written procedure comprises the two parallel paths shown in the bottom half of the chart. The application to amend can be conditional and can contain multiple “auxiliary requests”. This is a process familiar from Opposition procedure, in which the patentee is invited to set-out fallback positions should the patent be held invalid in its granted form.
The time periods are tight, for both sides. The patentee will need to provide a complete response to the claim for revocation within two months, together with any application to amend. It is to be expected that introducing alternative amendments later in the procedure will be difficult unless a clear cause can be identified for failing to introduce them at the outset. Similarly, the claimant has a period of only two months to respond to this application – if potential amendments have not been anticipated from the outset this will be a tight turnaround to optimise the case.
Further rounds of correspondence have shorter time frames still. At each stage the process is intended to reduce the number of issues covered. So, for example, the rejoinder can only address issues raised in the reply to which it is responsive. Nevertheless, it will be important for those entering into a revocation action to be prepared to respond with alacrity during the written procedure.
The interim procedure represents a divergence from experience at EPO Opposition proceedings, which typically progress from the parties’
written cases to an oral hearing, albeit with a preliminary view given by the Board in advance. In broad terms, the interim procedure is designed to allow one of the panel of judges, the judge rapporteur, to take the necessary steps to manage the case so that a decision on the merits can be reached efficiently at the final oral hearing. In practice, this means the judge rapporteur has a wide range of options at their disposal, including the ability to issue orders regarding the production of documents or experts, and to establish the framework under which witnesses may be questioned.
In a revocation action driven by documentary prior art evidence, these issues may be relatively less complex than they might be in the context of an infringement action. Witnesses may not be necessary to demonstrate the evidence relied upon, and while the evidence of experts may have a role, it is not incumbent on a claimant to rely on such experts; the presence of a technically qualified judge on the panel is intended to ensure the panel is not overly reliant on external expertise.
However, an aspect of the interim procedure that will interest the parties in a revocation action is that it is at this stage that the judge rapporteur should reach a view about the value of the proceedings for the purpose of recoverable costs. The judge rapporteur may also order the parties to submit, in advance of the final oral hearing, an indication of the costs they will seek to recover. Further details of the costs regime are provided below.
The interim procedure will itself involve a conference, albeit one that is likely to be held remotely. That, together with the ability of the judge
rapporteur to request any written information necessary to complete the procedure, means that the interim procedure will also be reasonably time-pressured, although the extent of that pressure will depend on the complexity of the issues involved. The interim procedure is intended to take a maximum of three months from the end of the written procedure.
It is part of the judge rapporteur’s tasks during the interim proceeding to summon the parties to the final oral hearing. Once the interim procedure is complete, the oral procedure begins and the “presiding judge” (who may or may not be the same as the judge rapporteur) assumes responsibility for management of the case.
The summons is not currently anticipated to include any indication of the judicial panel’s thinking beyond that which the parties may have inferred from the conduct of the interim procedure. As such, while the conduct of the oral hearing may be relatively regimented – the rules allow for explicit scheduling of the time available to the parties and any witnesses – representatives will need agility to cover any issues that arise during the course of the proceedings. In most cases, it is anticipated that the oral hearing should be completed within a day, although further time can be provided to hear witnesses if necessary.
The presiding judge controls the conduct of the oral hearing, which is held before the full panel. The Court can give its decision on the day (with detailed reasons provided later), but in general should provide a decision within six weeks of the hearing.
The fee for filing a revocation action at the UPC is €20,000, but the overall costs will of course be driven by the fees incurred during the process. In particular, at the UPC a losing party may be liable for the other party’s legal fees, and this creates an element of uncertainty in the procedure. Within one month of a decision on the merits, the winning party may initiate a separate, written procedure, seeking to recover these costs. The losing side will be offered the opportunity to comment on the matter, and it will be decided by the judge rapporteur.
The most recently published schedule of recoverable costs is reproduced above, although there may be changes to this scheme as yet. Nevertheless, it can be seen that the key factor will be the purported value of the proceedings. Final guidance has not yet been set by the Administrative
granted by the EPO will be open to revocation at the UPC throughout their lifetime. Those with an interest in the European patent system would do well to ensure they understand the consequences and are in a position to take advantage.
Author Peter Thorniley pthorniley@vennershipley.co.ukCommittee, but earlier versions provided a clearer indication in the context of an infringement action –the value corresponds broadly to the damages sought – than in the context of revocation. It will be important to follow the development of this as the Court beds in, but it is notable in the current rules that the judge rapporteur will be key, deciding the value during the interim procedure and deciding on the costs awarded later.
Revocation at the UPC has the potential to substantially change the European patent landscape, allowing third parties a powerful tool to clear weak patents without being limited to the current nine-month Opposition window. Used well, this should be an opportunity to increase the value of the patent system to European innovation, reducing the stifling effect of wrongly granted patents while at the same time increasing the value of those which represent true progress.
In the short term, the use of opt-outs may limit the effect, as patentees may choose to pre-emptively protect themselves from revocation where possible. However, this is a transitional measure, and in time all patents
The UK is actually made up of four jurisdictions, and this article focuses on the largest – England & Wales – and the Patents Court that sits typically in London. The English Patents Court can consider the validity and infringement of patents registered in the UK, which of course includes those granted from a European application at the European Patent Office. This was not affected when the UK left the European Union, as the European Patent Convention (EPC) is not an EU agreement.
The UPC is a court that comprises judges from participating Member States of the EU. The UPC currently has 17 EU Member States taking part in its jurisdiction, under the Agreement on a Unified Patent Court (UPC Agreement) which will enter into force on 1 June 2023. The UPC can consider the validity and infringement of European patents with unitary effect, and traditional European patents in the contracting Member States that have not been opted-out from the scope of the UPC.
Cases in the English Patents Court are heard by a single judge with expertise in patent law. This judge will make findings of both fact and law. In the UPC, there will be a panel of judges including legal judges and technical judges (experts). The panel decides the facts of the case, but the legal issues are decided by the legally-qualified judges.
In the English Patents Court, arguments on invalidity and infringement are generally heard together, rather than being bifurcated. In the UPC, bifurcation - in line with the traditional
model in Germany - is possible, and the degree to which it is adopted will be closely monitored.
The UPC will have a Court of First Instance (divided into local, regional, and central divisions) and a Court of Appeal based in Luxembourg. Cases will commence in any one of these divisions depending on the subject matter of the case and the prescribed division set out in the UPC Agreement and the UPC Rules. The central division can hear infringement and validity matters, and the local divisions are expected to routinely hear infringement but not validity –so, if an infringement claim is brought in a local division of the UPC, then the local division can hear the claim, but if there is a counterclaim for revocation (raising validity), this needs to be referred to the relevant central division branch.
Before filing a claim in the English Patents Court, the claimant must engage in pre-action correspondence with the proposed defendant to see if the matter can be settled without litigation. However, there are presently
no formal requirements to correspond with the proposed defendant prior to issuing a claim at the UPC. In practice it is likely for correspondence to occur between parties before a case commences to see if a settlement can be reached without the expense of going to court.
The initial claim documents in the English Patents Court include the Claim Form (which provides brief details of claim) and the Particulars of Claim (which provides the full details of the claim). In patent litigation claims, the Particulars of Claim are normally served at the same time as the Claim Form but can be served up to 14 days later. The UPC uses a single document called the Statement of Claim, which provides the full details of the claim.
In the English Patents Court, once the Court has issued (i.e. formally accepted and recorded receipt of) the documents, the claimant normally serves the documents on the defendant(s) directly. In the UPC, once the Court receives the documents, the
Court will serve the documents on the defendant(s).
The cost to issue a claim in the English Patents Court depends on the value of the claim, and can be up to GBP £10,000. The cost to issue a claim in the UPC is €11,000 plus an additional fee depending on the value of the claim – this additional fee can be up to €325,000.
In the English Patents Court, once litigation is within reasonable contemplation (e.g. after sending/ receiving pre-action correspondence),
whether the “balance of convenience” favours making the order, i.e. compares the inconvenience or damage to the patentee if the injunction is not granted with the inconvenience to the alleged infringer if it is granted. The patentee will have to give a cross-undertaking in damages – if the interim injunction is later found to have been wrongly granted (because the patent is invalid or not infringed) then the patentee will have to compensate the other party.
A patentee can apply for a preliminary injunction in the UPC. Before granting an injunction, the Court shall weigh up the interests of the parties, in particular the possible damage that could result to the respective parties
be enforced directly in any contracting member state. Failure to comply with the judgment in a particular Member State has the same consequences as failing to comply with a judgment of the national Court of that Member State.
The successful party in the English Patents Court can expect to recover some of their costs - typically 60%, or more if the other side has behaved unreasonably. Similarly, the successful party in the UPC will be able to recover “reasonable and proportional” costs from the losing party. However, until costs decisions have been made in a number of cases, it is not clear what orders may become common. Recovery for legal representation fees (i.e. not court fees) is capped depending on the value of the claim (between €38,000 for a case of less than €250,000 and €2 million for a case worth more than €50 million) in the UPC.
parties are required to preserve all documents (physical and electronic) that could be disclosed during the claim. This includes documents that would ordinarily be deleted under a document retention policy or in the general course of business. Documents that must be preserved and disclosed include both those that will help each party’s case, but also those that would weaken that party’s case or assist the other party’s case.
In the UPC, a party can make an application to preserve evidence, but there is no automatic requirement to preserve documents. If a party wishes for the other party to provide disclosure in the UPC, then that party must make an application to the Court, including the specifics of the evidence to be disclosed, and provide reasons for this request. From an English perspective there would seem to be no reason not to make the applications for preservation of evidence and for disclosure routinely, but we must wait to see how practice develops.
A patentee can apply for an interim injunction in the English Patents Court. The Court will consider whether there is a serious question to be tried and
from the granting or the rejection of the injunction. The Court may require the applicant to establish that they are entitled to commence proceedings, that the patent is legally valid, and that the patent is infringed or threatened with infringement. If it subsequently turns out that there has been no infringement, the Court may order the applicant to compensate the respondent for the damage done by the interim injunction.
The English Patents Court can grant the claimant damages or an account of profits. There are also powers to grant orders for destruction/delivery-up of infringing items and an injunction in England & Wales to stop certain activity/infringement. The UPC can grant the claimant damages or an account of profits, as well as orders for destruction/delivery-up of infringing items and an injunction across all the contracting Member States.
A judgment of the English Patents Court can be enforced in England & Wales, and will be recognised in Northern Ireland and Scotland. Failure to comply with a judgment is contempt of court. A judgment of the UPC can
Since the departure of the UK from the EU, there is no longer any overlap of scope between the jurisdiction of the English Patents Court and the UPC. If a company needs to enforce its rights in both the UK and across the contracting Member States, then there will have to be separate proceedings. As they would be covering separate patents (even if the claims for such are the same), the proceedings could run contemporaneously, as long as the claimant has the cashflow to pursue both litigations at the same time. The English Patents Court is one of the fastest jurisdictions globally, with a trial typically of 12-18 months from a claim being issued, and appeal rounds normally occurring within a year. If the UPC is slower than this, and if bifurcation becomes commonplace, as it may, then the prospect of seeking a decision in England first, ahead of UPC proceedings, might be tactically advantageous for some parties.
Author James Tumbridge jtumbridge@vennershipley.co.uk Benedict Sharrock-Harris bsharrock-harris@vennershipley.co.ukIn the English Patents Court, arguments on invalidity and infringement are generally heard together, rather than being bifurcated.
The new system will represent the most wide-ranging change to the European patent system since the adoption of the European Patent Convention (EPC) in 1977...
...offering the chance to litigate patents in multiple European jurisdictions in a single procedure and a process for obtaining a UP right in those countries. However, this is fundamentally a new package of options bolted on to the structures already in place – the complexity of the changes and the slow-burn to final adoption has led to some overreach in expectations. In the excitement and noise surrounding the dawn of a new era, here are some key points which will not change:
At heart, the UP/UPC is trying to complete a process of harmonisation that has remained partial since the founding of the European patent system. The key to originally achieving this partial harmonisation was to recognise a distinction between pregrant and post-grant proceedings. The EPO was set up to handle prosecution up to grant, and had a limited role postgrant (with the significant exception being Opposition procedure – also unaffected by the introduction of the UP/UPC system).
The UP/UPC is designed to complete harmonisation by addressing postgrant issues, and so does not affect the EPO’s existing role. The EPO will have a new role maintaining the register of UPs, and is certainly an interested party in the development of the European patent system, but users of the office will see no change in the prosecution procedure up to grant.
17 countries will take part in the UP/ UPC system when it starts. This means that the majority of the 38 EPC nations will not be part of the system, at least initially. The countries not taking part include a mixture of European Union and non-EU nations – among them the United Kingdom, Spain, and Poland – the route for obtaining patents in those countries through the EPO process remains the same, as does enforcement through the relevant national courts.
The transition period is a complex beast. In essence, it allows a soft start to the use of the UPC, ensuring patent proprietors retain the option to use existing courts in UPC participating countries if they prefer for a limited period (seven years initially, although there is the possibility for this to be extended). However, while this does mean that after the period ends the new system will be somewhat more rigid, this transition by its nature only applies to countries participating in the UP/UPC system. There will be no change to the routes to grant (including via the EPO) in European countries not participating in the UP/UPC, or indeed to post-grant litigation procedures in those countries, once the transition period ends.
Author Peter Thorniley pthorniley@vennershipley.co.ukQ. When will the Unitary Patent (UP)/Unified Patent Court (UPC) come into force? What is the time scale for the introduction of the new system?
A. The UP/UPC will come into effect on 1 June 2023.
Germany deposited its instrument of ratification on 17 February 2023, as well as triggering the “sunrise period”. The sunrise period is particularly important for the registering of “opt-outs” which are addressed below.
Q. Does the UP replace the existing system for obtaining European patents?
A. NO! The UP provides an additional option for patentees. It will still be possible to obtain classical European patents instead of a UP, and indeed this will be essential to obtain protection in those countries that are not part of the UP but which are members of the European Patent Organisation.
Q. What is a UP?
A. A UP, formally known as a “European patent with unitary effect”, is a single patent for all European Union states that are participating in the UP system and that have ratified the Agreement on a Unified Patent Court (UPC Agreement). It is obtained through exactly the same prosecution procedure as a classical/ traditional European patent, but aftergrant results in a single patent for the participating member states, as opposed to the bundle of national patents that result from validation of a classical European patent.
Q. What are the benefits of a UP?
A. A UP permits a patentee to obtain a single patent in multiple countries for a lower cost than would be possible by national validation, due to eliminating the costs of validation and the costs of individually renewing in each country. Furthermore, the patentee will be able to enforce the patent for all participating territories in a single action.
Q. Which countries are covered by a UP?
A. 17 EU countries have currently ratified the UPC Agreement and deposited their instruments of ratification. These are Austria, Belgium, Bulgaria, Denmark, Estonia, France, Finland, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
Other countries which have signed the UPC Agreement but not yet ratified are Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia. These countries are unlikely to be covered in the short term.
Spain, Croatia, and Poland are EU members but are not participating in the UP at present.
Along with Norway, Switzerland, Turkey, and the other European Patent Convention, non-EU, member states, the United Kingdom is not participating in the UP.
Q. Will the UP save on costs?
A. The fees for renewal of a UP have been set at the combined total of the renewal fees of the four countries where European patents were most commonly validated in 2015. Patentees who previously validated in more than four or five countries will tend to save on renewal costs, while patentees who validated in fewer countries will find the UP more expensive, but will of course have protection in more territories.
Q. What is the procedure for obtaining a UP?
A. A UP is obtained by filing a request with the European Patent Office (EPO) at the latest within one month of the date of grant. During a seven-year transitional period it will be necessary to file a translation of the entire application into another EU language, including if the application is in English.
This means that UPs start as European patent applications filed with the EPO as now and prosecuted in the same way. It
is only at grant that applicants will need to decide whether to obtain “classical” European patents through the system of validation that has long been in place or to elect a UP to cover the countries taking part in the new system.
Opposition and appeal procedures at the EPO are unchanged and will have the same effects for UPs as for conventional validations.
Q. How will I get protection in countries which are not participating in the UP?
A. Protection in other countries is unchanged. For example, if you wish to cover France, Germany, Italy, Spain, and the UK, you can request a UP to cover France, Germany, and Italy (and 14 other countries), and you can separately validate in Spain and the UK to obtain national patents (EP(ES) and EP(UK)) in those countries. You can of course validate to obtain separate French, German, and Italian patents as an alternative to the UP.
Q. Will UK (and other nonparticipating country) European patent attorneys be able to apply for UPs?
A. YES! The prosecution procedure for EPO patents remains unchanged and requesting a UP is simply another option (alongside validation) that your UK European patent attorney will provide.
Q. What is the role of the UPC?
A. The UPC is a new court system that will have jurisdiction over UPs, as well as over classical European patents in the participating countries, unless those classical European patents are optedout.
Q. What does it mean to opt-out a patent (or patent application)?
A. For a transitional period of seven years, it will be possible to register an opt-out for a classical European patent with the UPC Registry, which will mean that any action relating to that patent will have to be taken in the national
courts, and not at the UPC. In other words, the patent is removed from the jurisdiction of the UPC. It is not necessary to wait until grant to opt-out – a pending patent application can also be opted-out once published.
Q. Is it possible to opt-out individual patents, e.g. only the German part of the European part, while leaving other parts subject to the jurisdiction of the UPC?
A. No. An-opt out will be effective for the territories of all participating member states.
Q. Is it possible to opt-out a UP from the jurisdiction of the UPC?
A. No. UPs can only be litigated in the UPC.
Q. Why would you want to opt-out a patent?
A. This is a complex question. The UPC is a new court and there may be many reasons for not wishing to subject your patents to its jurisdiction. However, one of the main reasons for opting-out is that you do not wish your European patents to be subject to central revocation. In certain industries, for example the pharmaceutical industry, there has been some concern that the UPC could provide a forum for challenging and potentially revoking patents concerning “blockbuster” drugs across a large part of the EU in a single action. It has therefore been suggested that the pharmaceutical industry will opt-out all of its key patents.
Q. What will happen to the UPC if everyone opts-out all of their patents?
A. This is unlikely. Commentators have suggested that while the pharmaceuticals industry may opt-out its key patents, this will still leave a very substantial number of secondary patents, and the industry has expressed a desire to engage with the system with a view to shaping it. Furthermore, commentators suggest that other industries, such as the electronics and consumer goods industries, are far
less concerned about opting-out their patents.
Q. When will I be able to opt-out my patent(s)?
A. We are currently in the “sunrise period”, which allows applicants to register opt-outs on their patents and pending applications.
Q. Will the UPC have jurisdiction over national (non-EP) patents in participating member states?
A. No. The UPC will have no jurisdiction over patents granted by national patent offices – only patents granted by the EPO.
Q. Will national courts in participating member states continue to have jurisdiction over classical patents granted by the EPO?
A. During a seven-year transitional period, the UPC and the national courts will have joint jurisdiction, unless the classical patents have been opted-out. After the seven-year transitional period, both classical and UPs will be under the exclusive jurisdiction of the UPC.
Q. How will the UP affect European patent applications which are currently being prosecuted?
A. There are many ways of delaying grant of European patent applications if you wish them to be eligible for the UP. The EPO has provided transitional measures to permit an early request for a UP, as well as to delay grant, once the applicant has received a Rule 71(3) communication (Notice of Allowance).
You can also continue to obtain protection in both UP and non-UP countries by filing directly at the national patent offices rather than at the EPO.
You can also register opt-outs for your pending patent applications as noted above.
Q. How will the UPC be organised?
A. The UPC will comprise a Court of First Instance, a Court of Appeal, and a
Registry. The Court of First Instance will consist of several regional and local divisions, and a central division, with its seat in Paris, France and a section in Munich, Germany. The German section will hear mechanical and weapons cases and the French section will hear telecommunications, electrical, and other cases. Before the UK withdrew its ratification of the UPC Agreement, another seat of the central division was to be located in London, England. This section was to hear a broad range of cases, including pharmaceutical, biotech, chemical, agricultural, and medical devices. At present it is not clear if the case load that would have come to London will be split between Paris and Munich or if a further seat of the central division will be created in an alternative city. Milan, Italy and The Hague, the Netherlands have been discussed as possible candidates. The Court of Appeal will be located in Luxembourg.
Q. Does the Court of Justice of the European Union (CJEU) have a role in the UPC system?
A. The CJEU is the ultimate arbiter of EU law, so is available to rule on questions of EU law referred to it by the UPC.
Authors Peter Thorniley Jan Walaski jwalaski@vennershipley.co.uk© Venner Shipley LLP 2023
This newsletter is for general information for our clients. Its contents are not a complete statement of the law on any subject. Professional advice should be sought before any course of action is pursued.
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