How to prepare

Unitary Patent

If the Unitary Patent enters into force, applicants and proprietors have to make arrangements to be prepared and have their strategies ready.
Today there is no definite answer what will happen now that the UK has voted for Brexit. In theory it is possible that the UK could, while still an EU member, ratify the UPC and hence enable it to open in 2018.

In the first place it must be kept in mind that not all contracting member states will be covered by the Unitary Effect from the start. At the moment (September 2017), only 14 countries have ratified the Unified Patent Court Agreement, and only those countries that have ratified it at the time your European patent is granted will be covered by the Unitary Patent.The UK and Germany have to be among the states that ratify the UPCA before it can enter into force, which means that, for the same cost for renewal fees for four countries today, your Unitary Patent will cover 16 states. This also means that your patents will be covered in the three contracting member states in which most validations of European patents are carried out today, which would still be a considerable advantages in terms of cost vs. coverage.

The language regime for the Unitary Patent should also be considered. Within one month of publication of the grant, the request for the patent with unitary effect must be filed. If your patent is granted in English, a translation of the entire specification into any of the languages of the EU member states must also be filed at this time. If the patent is granted in French or German, the translation must instead be filed in English. This translation should be man-made for a transitional period of 7 years, after which period this requirement will probably be abolished. The cost of preparing a translation should therefore be considered. As general advice, if the patent was originally filed in, say, Danish, this text could be used for the translation. Otherwise if the text is in English, a translation into German or French could be an alternative, as the patent claims will still have to be translated for the purpose of the grant. Other options are Spanish and Polish in situations where Latin and South America is relevant or the patent is to be validated in Poland and Spain.

When preparing for the entry into force of the new patent system in Europe, patent applications which are currently pending before the European Patent Organization (EPO) must also be considered. A decision must be made whether to try to delay the proceedings to enable a request to be made for a European patent with unitary effect or to proceed to a granted European patent before this date. Of course, a pending patent application which is not anticipated to be granted before the system take effect and which is not meant to fall under jurisdiction of the Unified Patent Court (UPC), may also be opted out, starting in the sunrise period.

Delaying the proceedings with the EPO can be done by requesting extensions of time limits or, if this is no longer an option, by filing divisional applications. The filing of divisional applications, which have a slightly different scope of protection, could also be an important strategy for those applicants who wish to have it both ways, i.e. to request a unitary patent and have the patent validated nationally as today.

Unified Patent Court

There will be a transitional period of 7 – 14 years in which patent owners can opt out from the UPC for traditionally validated European patents and SPCs. Every seven years the system will be evaluated. A decision regarding whether or not to request an opt-out for patents that have already been granted is advisable before the system comes into effect.

Potential defendants before the Court, e.g. a patent proprietor in a revocation action or an assumed infringer in an infringement action, must be ready to act very quickly after receiving a summons. The time limits for responding will be very short. One way of preparing for this is to set up an internal team which is ready to take immediate action and make decisions.