Decisions on Grant for Applications at the EPO
For any EP patent that grants after the Unified Patent Court (UPC) Agreement comes into effect (including applications which are currently pending), applicants will be able to decide whether or not the EP patent should become a unitary patent for those countries participating in the UPC or whether to proceed with conventional national validations of the EP patent in all or some of those countries. The choice will have cost implications and implications for which court(s) will have jurisdiction. For countries not participating in the UPC, validation will proceed as before. Filing and examination up to grant are not affected.
As shown in the examples below, in the future there are two main options for obtaining patents using the centralised examination and grant procedure at the EPO.
Option 1 – selects a Unitary Patent (UP) and optionally individual national validations of an EP patent for territories not covered by the UP. This option benefits from the cost and enforcement advantages of the UP, at the expense of some flexibility and risk of an all or nothing central revocation action at the UPC. This option will be available for the foreseeable future.
Option 2 – selects individual national validations of an EP patent thereby retaining flexibility (e.g. for renewal fee payments) whilst allowing the optional use of the UPC for those states taking part when not opted out. Jurisdiction for Spain and Switzerland and other non participating countries remains solely with their national courts (no shading). See here for a discussion of whether or not to file an opt-out.
The UPC will have exclusive jurisdiction for unitary patents; it will not be possible to enforce or revoke a unitary patent in a national court.
The main attractions for choosing a unitary patent are wide geographical coverage at reasonable cost and increased simplicity. There is also some increased flexibility when bringing an enforcement action under circumstances where the patent claims multiple steps which the infringer performs in multiple contracting Member States. For some applicants the possibility of a central revocation action at any time in the lifetime of the patent and the loss of flexibility compared to validations of an EP patent will outweigh those advantages. For other applicants the broad geographical coverage will not be of interest.
The pros and cons of seeking protection in the UPC participating states via a UP are set out below.
For more information please contact Martin Jackson