Faqs About the Unitary Patent System and Unitary Patent Court

FAQs About the Unitary Patent System and Unitary Patent Court

Can pending EPO applicants select the UP option? Yes. The new system will apply to currently pending applications in the EPO that proceed to grant after the implementation date.

How does an EPO applicant select the UP option? An EPO applicant can postpone the decision on whether to select the UP option or the national validation option until the application proceeds to grant. Applicants must then select the UP option within one month of the EPO grant date. EPO applicants who do not wish to obtain a UP or who want protection in countries that are not part of the UPS may elect to validate nationally after grant according to the current deadlines (three months after grant in most EPO members). EPO applicants can also select a combination of a UP and validating nationally in countries that are not part of the UPS.

What are the translation requirements for the UP? Generally, the requirements will be less burdensome than for the current national validation or direct national ﬁling routes. During the ﬁrst twelve years of the UPS, only one translation will be necessary. Patents prosecuted in French or German must be translated into English. Patents prosecuted in English must be translated into any other EU language (not limited to French and German). After the transitional period, no translations will be required.

What are the validation and maintenance costs? There is no validation fee. There is a single annual maintenance fee equivalent to the cost of four national renewal fees (UK, France, Germany and Netherlands).

When should a patent applicant decide which of the filing options to use? For those wishing to avoid the jurisdiction of the UPC, one option is to file separate national patent applications, rather than a single European patent application at the EPO. In order to take this national route, it is necessary to plan ahead. For several European countries – Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Malta, Monaco, the Netherlands, and Slovenia – it is not possible to enter the national phase (i.e., file separate national patent applications) directly from a PCT application. Patent protection in these countries may be pursued from a PCT application only by entering the regional phase at the EPO. If national applications in these countries are required, then these would need to be filed at the relevant national patent offices at the same time as the PCT application (or within one year from the earliest priority application under the Paris Convention).

How will the UPC be organized? The UPC will include a central court of ﬁrst instance (Central Division), split into three locations with one in Paris, one in London, and one in Munich handling cases based on subject matter. The court in London will handle life-sciences, chemical and medical device cases, while the court in Munich will handle mechanical engineering cases. The court in Paris will be the seat of the Central Division and will handle cases falling outside the subject matter of the London and Munich courts (e.g. IT and telecom). The Central division will handle requests for revocation and declaratory judgments of non-infringement as well as some patent infringement cases. The UPC will also have local courts of ﬁrst instance (Local Division) in certain EU member states, intended to handle some infringement cases and may also

FAQs About the Unitary Patent System and Unitary Patent … © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 1 handle their revocation counterclaims, if any. Some UPC states may also have more than one local court depending on the number of cases handled. The UPC may also have regional courts of ﬁrst instance (Regional Division) for participating member states which would also handle some infringement cases and may handle their revocation counterclaims, if any. Sweden, Lithuania, Latvia and Estonia agreed in March 2014 to the creation of such a regional division. A single UPC appeals court will be based in Luxembourg.

Which patents will be enforced through the UPC? All UPs will be enforced by the UPC. During the transitional period, holders of nationally validated EPO- granted patents will have the option to use the UPC for enforcement, or to opt out of the UPC (upon payment of a fee and as long as no UPC action concerning the patent has commenced) and use only the national court systems as under current practice. Those patent holders opting out, however, will be free to opt back into the UPC system at any later time provided that no national proceedings have been initiated. It is likely that many holders of EPO-granted patents will initially elect to opt out of the UPC, but may opt back in for strategic reasons at a later time. After this transitional period, all EPO- granted patents will be enforced by the UPC system in the UPS signatory countries. Claims for revocation of a UP, or a classical EP patent which has not opted out of the UPC in the transitional period, can be brought before the UPC at any time after grant during the patent’s lifetime, unlike EPO oppositions which can only be ﬁled within 9 months of grant. Opting out of the system and opting back in can only be done once. There will also be a fee for opting out and opting back into the system, both currently proposed at 80 EUR per patent.