June 2022 Newsletter

Vol 15, Issue 2

Get Ready for the Unitary Patent and the Unified Patent Court

By Melissa L. Kleine

Anyone with a patent portfolio including European patents may be familiar with the existing prosecution process. In particular, an application is filed, examined, and granted by the European Patent Office (EPO). Upon grant, the applicant selects the European countries in which to extend patent protection individually (also referred to as “validation”), followed by paying the fees and satisfying the various formalities for each country selected (e.g., providing any required translations). Annuities to maintain the patent must likewise be paid for each individual country. This provides the patent owner with flexibility to maintain or abandon protection by country as needs evolve.

The new Unitary Patent and Unified Patent Court (UPC) system, which will be implemented between the end of 2022 and the beginning of 2023, aims to streamline various aspects of the validation and maintenance processes by permitting applicants and patent owners to opt into combined and centralized post-grant procedures for countries that have ratified the UPC agreement. The countries that have already ratified are as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Germany further intends to ratify once preparations for the UPC are completed, as Germany’s ratification will trigger a transitional period of three to four months before the UPC agreement enters into force. Thus, as of this writing, the exact date of implementation is unknown.

Although further ratifications are expected to follow (Cyprus, Czechia, Greece, Hungary, Ireland, Romania, and Slovakia), certain EU countries have indicated that they will not ratify (Spain, Croatia, and Poland), and non-EU countries are not eligible to ratify. These ineligible countries include the United Kingdom (following Brexit), Switzerland, Norway, Albania, Iceland, Liechtenstein, Macedonia, Monaco, San Marino, Serbia, and Turkey.

There is no requirement for patent owners to request a Unitary Patent, as the traditional validation process remains available. A combined approach is also available for the patent owner to request both the Unitary Patent and traditional validation in any country that has not ratified the UPC agreement.

If a patent owner opts to request a Unitary Patent (which must be filed within only one month from the date of grant), a single validation procedure is performed for all countries that have ratified the UPC agreement. There is no ability to select individual countries within the UPC—the Unitary Patent is effective for all UPC countries at the date of patent grant. Additionally, there are no formal validation fees and only one full translation of the granted patent is required. If the patent was filed in English, a translation must be provided in any other official language of any EU state (including EU states that have not ratified the UPC agreement, e.g., Spain). Moreover, this translation requirement is only in effect for a six year transitional period and machine-generated translations are acceptable.

Maintaining a Unitary Patent will only require a single annual fee that is payable to the EPO, which advantageously eliminates the need to retain local counsel in each individual country for the purpose of tracking and paying annuities. The renewal fee for a Unitary Patent is roughly equivalent to the national fees of four typical member states individually. Therefore, patent owners validating in three or fewer countries may wish to follow a traditional validation strategy. Similarly, patent owners that often abandon protection in individual countries over time may chose a traditional validation strategy to retain this option.

Revocation and infringement proceedings of a Unitary Patent will occur in the UPC, which will include Courts of First Instance located across Europe and a Court of Appeal located in Luxembourg. The time from filing to written decision for both revocation and infringement proceedings aims to be approximately 12-14 months. In keeping with the goal of streamlined actions, the use of expert witness testimony and discovery is limited. UPC orders will apply across all states that have ratified the UPC agreement, including preliminary measures (e.g., preliminary injunctions, preservation and production of evidence, seizure of suspected infringing products) and remedies (e.g., damages, injunctions, seizure of infringing products).

The UPC will have exclusive competence for all Unitary Patents and any patent granted by the EPO—including existing patents—regarding states that are a party to the UPC agreement. During a transitional period of at least seven years, owners of non-Unitary Patents may opt-out of UPC jurisdiction (unless UPC proceedings have already been implemented against the patent). Notable considerations for opting-out of UPC jurisdiction include the lack of settled UPC case law, as well as the potential risk of wide-ranging geographic effects of a single revocation or infringement action.

If you have questions regarding the Unitary Patent system and strategies for European patent portfolios, please contact your attorney at Andrus Intellectual Property Law.

Joseph D. Kuborn, Aaron T. Olejniczak and Peter T. Holsen recognized by Managing IP

Attorneys Joseph D. Kuborn, Aaron T. Olejniczak and Peter T. Holsen were selected for inclusion in Managing IP's 2022 edition of the IP Stars list as Patent Stars. Managing IP’s World IP Survey covers over 80 jurisdictions, and the rankings are based on extensive research among IP practitioners carried out over six months. A team of researchers seeks responses from thousands of firms and clients. IP Stars highlights attorneys with a strong understanding of products and industry areas, as well as the requisite legal experience.

Andrus included in the guide entitled IAM Patent 1000 - The World's Leading Patent Practitioners 2022

Andrus was once again included in the guide entitled IAM Patent 1000, which is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process by a team of highly qualified analysts, the publication identifies the top patent practitioners and law firms in 40 of the world’s most important jurisdictions and 20 U.S. states. In addition to firm-wide recognition, Joseph D. Kuborn, Aaron T. Olejniczak, Peter T. Holsen, Christopher R. Liro, Benjamin R. Imhoff and Ryann H. Beck were featured individually, based on positive feedback from clients and associates.

Andrus Ranked in Chambers USA 2022, with attorneys Joseph D. Kuborn and Aaron T. Olejniczak featured individually

Andrus was selected as a ranked law firm in Chambers USA 2022, identifying our firm as one of the best firms in Wisconsin in the field of intellectual property law. In addition to the firm-wide ranking, Joseph D. Kuborn was included as a Ranked Lawyer in IP and Aaron T. Olejniczak was included as a Ranked Lawyer in IP and IP Litigation. Chambers ranks lawyers and law firms based on the research of over 170 full-time editors and researchers at their head office in London. Researchers talk to lawyers and clients, conduct in-depth telephone interviews, and review submission forms provided by law firms.