European Unitary Patent & Unified Patent Court – How Is The New System Shaping Up?
Stewart Cameron, European & UK Patent Attorney, gives an update on how the new Unitary Patent & Unified Patent Court System has performed in practice since it came into force in June 2023.
The new Unitary Patent (UP) is a centralised patent which covers certain EU states. At the time of writing, UPs do not currently cover Spain, Ireland, Poland, Czech Republic, Slovakia, Hungary, Romania, Croatia, or Greece. Not being an EU state, UPs also do not cover the UK. European patent applications are filed and examined under the traditional way at the EPO until grant – at which point applicants have a choice of either validating that application in the traditional way in chosen member states – or via a single central Unitary Patent which covers the whole of the EU.
If the applicant also wants protection in countries that are part of the European Patent Convention (EPC) but not part of the European Union (EU) then they can elect to file a UP and also national validations in any such countries. Since the UK has chosen not to participate in the UP or UPC systems, it is one such important territory where national validation is still required in addition to any UP.
In contrast, the Unified Patent Court (UPC), which begun operations in June 2023, is a centralised European court which offers a new forum for applicants to raise European Patent infringement and validity cases.
In common with other European Patent Attorneys, Cameron Intellectual Property had a busy period advising on and filing pre-emptive opt-outs in the lead up to the UPC’s inception. Though on the face of it a very simple task, in practice the opt-out process presented a number of attorneys in the profession some challenges since it was necessary to first accurately identify the patent rights actually eligible for opt-out and also since the UPC’s CMS system for registration was not especially organised or user-friendly. Many users apparently also faced problems initially in obtaining the secure identity filing cards required to make such opt-out requests.
High Number Of “Opt-Outs” Registered
Despite the challenges, approximately 500,000 opt-outs were registered during the “sunrise phase” marking a significant portion (1/3) of all patents eligible for opt-out. Anecdotal evidence suggest that many further applicants still intend to opt-out in future but have not yet done so.
The published statistics clearly demonstrate that English is the dominant language for UPs (English = 71%, German = 22%, French = 7%). Furthermore, where a UP is filed in German or French an English translation is necessary regardless – and thus of course English also has the major share of the language used as the translation for informational purposes according to the EU 1260/2012. With language, and the nuanced meaning of words, so crucially important to patent examination, infringement and validity this is an interesting statistic for UK based European Patent Attorneys whose first language is English.
Early Unitary Patents
From the published statistics, it is evident that early pre-emptive applications for UPs began to appear in January and increased following the UPC’s implementation in June. By August, thousands of requests for UPs had been received and accepted.
The fields of “Infrastructure and Mechanic,” “Health,” and “Materials and Production” lead the way in the number of UPs requested (each accounting for approximately 20% of all UP applications).
Diverse Nationalities Of UP Applicants
As one would expect, a diverse range of applicant nationalities have filed UPs. European applicants lead the way – with applicants in the United States also being notably prominent. At this early stage, the statistics indicate that applicants in Asian countries are less keen on UPs.
The UPC’s Early Cases
In contrast to the reasonably healthy uptake of the UP, The Unified Patent Court has had a very slow start. Fewer than 50 cases were filed in its first two months of operation.
These included e.g. FRAND-related infringement cases, validity cases and preliminary injunction cases.
Challenges With The UPC’s IT System
The UPC’s CMS and IT system has faced many challenges. This has caused some inconveniences for users (and judges). Improvements are to be expected.
Conclusion From A UK Perspective
The UP system has got off to a reasonable start; however, based on the high proportion of opt-outs from the UPC it seems that applicants are (understandably) cautious about the idea of a centralised European court deciding on infringement and validity matters.
Although the jurisdiction of the UK is not part of the UP or UPC system, the UK is a founding member of the EPC. UK-based European Patent Attorneys therefore have the right to represent applicants before the UPC. The majority of UK based European Patent Attorneys handle mainly European patent applications (as opposed to national UK) patents. Indeed, the UK consistently has the highest of all pass rates nationally in the European Patent Attorney qualifying examinations. These factors, coupled with the fact that English is the language of the proceedings in most UP and UPC cases, mean that UK-based European Patent Attorneys are extremely well placed to advise. Further information on this aspect can be found here https://youtu.be/SY7SC4p3QSU
Stewart Cameron, European and UK Patent Attorney
T. +44 (0)208 390 3775 (London)