Out with the old, in with the new? Comparing the existing European Patent system with the new Unitary Patent and Unified Patent Court

In this first of three articles, we compare the current European system of patent prosecution and enforcement with the new Unitary Patent and Unified Patent Court which will come into effect on 1 June 2023.  Part two will highlight the procedural features of the UPC, and part three will discuss strategic considerations for opting out of the UPC system.  Please contact a member of the CMS team if you are interested in discussing any of these topics in greater detail.

Under the current European Patent regime, a patent application granted by the EPO gives rise to a bundle of up to 39 national patent rights, which are subject to validation in each EPC member state (a list of the EPC member states can be found here).  Renewal and enforcement are carried out in each jurisdiction separately.  Therefore, if a party wants to attack a patent in more than one country, it must do so in each relevant member state.  This can result in costly and lengthy multi-jurisdictional litigation, as well as the risk of inconsistent decisions in different jurisdictions.

The UPC system introduces both a new Unified Patent Court and a new patent right, the Unitary Patent.

The UPC will provide a single forum for patent litigation – a court whose decisions will apply in all EU Member States who have signed and ratified the UPC Agreement (currently 17 countries).  This means it will be possible to invalidate a patent or obtain an injunction across a significant part of the EU through only one set of proceedings.  This is a significant change from the current system which requires multiple sets of proceedings, each with their own timeline and team of national lawyers.  There are however some key markets absent from the current list of 17 countries, including Spain, Poland and of course, the UK.  National proceedings will therefore still need to be brought in those countries to the extent they are relevant markets.

As well as a new court system, a new Unitary Patent is being created which will cover all UPC member states.  This means patentees will be able to obtain a single patent which is valid in multiple EU countries, rather than the bundle of national rights currently granted by the EPO.  This could be an attractive prospect for patentees who are currently faced with multiple validation, renewal and service fees to maintain these bundles of rights across the EU.

The existing “bundle of national rights” model will also remain an option though, meaning patentees will need to decide at the point of grant which type of patent they wish to opt for.

The UPC will not just have jurisdiction over these new Unitary Patents.  It will have automatic and retrospective jurisdiction over new and existing European Patents unless they are specifically opted out of the system.  It’s therefore not just a forward-looking system, but a system that impacts everyone holding or seeking to invalidate a European Patent which has already been granted.

Patentees of existing and new European Patents will be able to opt out their patents from the UPC’s jurisdiction in the three month sunrise period before the introduction of the UPC. The Sunrise Period will start on 1 March 2023 followed by the entry into force of the UPC on 1 June 2023.  After 1 June 2023, it will only be possible to opt out if no proceedings have been issued before the UPC.

The aim of the UP and UPC system is largely to simplify patent prosecution and enforcement, although it may well complicate matters for patentees in the short term as they grapple with a new forum and type of patent right.  There are important decisions to be made regarding existing patent portfolios and future applications which patentees should ensure they are dedicating sufficient time and resources to.  There is no “one size fits all” approach – the best strategy will depend on multiple factors including the nature of the invention, the key markets and the size of the portfolio.

With our extensive European presence, CMS is uniquely placed to help our clients navigate this new system.  If you would like to explore the appropriate strategy for your patent portfolio, or have any other questions on the upcoming changes, please contact a member of the CMS team, who will be happy to discuss this with you.