What is the Unitary Patent and Unified Patent Court
Justin Simpson: At its heart, the Unitary
Patent (UP) was established as a way to simplify and reduce the
cost of patent filing in Europe. It's an agreement between
European Union member countries that establishes a single
patent right across these countries that can be enforced by a
court, known as the Unified Patent Court (UPC). Depending on
the subject matter, the central court ruling on the matter will
be based either in London, Paris or Munich, but its decisions
will be enforceable in all EU countries who have signed up to
Traditionally speaking, what has been the most common way
to obtain patent protection in Europe?
Justin Simpson: Typically, through a
European patent application via the European Patent Office.
That route allows one to obtain a granted patent, but it will
only be enforceable in individual European countries once it
has been validated in those countries. So it's really a
centralised prosecution path, but validation and enforcement
happen in individual countries.
This seems straightforward enough, why was there a push to
implement the UP?
Justin Simpson: A European patent isn't a
single right, but a bundle of individual country rights. When
you're validating in a lot of countries it can be expensive and
time-consuming. Likewise any patent disputes must be litigated
in each nation individually and each country isn't bound by
decisions in other national courts.
When did this push occur and how long has the UP and the
UPC been in the works?
Justin Simpson: There have been discussions
surrounding it for decades. In 1973 when the legal basis of the
European patent system was created with the European Patent
Convention (EPC), member states began inquiring about the
creation of a Europe-wide patent (much like the worldwide
patent most applicants wrongly assume exists). In December
2012, a formal agreement was reached. Now, ratification is
needed by 13 of 26 countries currently participating –
including the UK, France & Germany. So far, 11 states have
ratified, including France so it's nearly ready to go, although
significant hurdles have yet to be overcome that I'll touch
What are some major differences in filing via the UP from
the current European patent?
Justin Simpson: As I briefly discussed
earlier, the Unitary Patent is actually a parallel system to
the current European patent. The UP was set up so you can
choose to validate the old way, in individual European
countries, or via the UP which would have effect in a bundle of
EU countries. Patent applicants will have the choice between
using the UP or individual European validation, once they've
gone through prosecution at the EPO.
Why would this filing method be advantageous for
Justin Simpson: For applicants who want
protection in a large number of European countries, the
objective of the UP is to make validating and enforcing patents
in Europe easier and less expensive. With UPs, you'll save on
translations and paying for validations in individual
countries. Also, in cases of infringement, you won't have to
handle the dispute in dozens of individual national courts. It
centralizes enforcement into one governing authority –
the UPC. However, for applicants that are happy with protection
in only a handful of European countries, the UP won't really
How does the uncertainty around Brexit affect the UP?
Justin Simpson: When the UK referendum
happened and British voters elected to leave the European
Union, the future of the long-awaited UPC Agreement immediately
became uncertain. It is important to remember that the UP is an
agreement among European Union member states and as London is
one of the three locations for the Unified Patent Court, it's a
tricky situation. In November 2016 many were shocked when the
UK government announced that it would proceed with preparations
to ratify. However, it still remains unclear if the UK can stay
in the system once the country leaves the EU. Recently, the EPO
President, Benoît Battistelli, noted he is confident the
EU can find a way to keep the UK in the Agreement if there is a
way to accept the supremacy of EU law. It is difficult to know
what will happen in two years' time, and a lot of different
opinions on the most likely outcome. Watch this space!
When will the UP come into effect, is there a date set
Justin Simpson: A year ago, the expectation
was a spring 2017 launch. However, this has since been pushed
and optimists are looking at the end of 2017. This date now
looks increasingly compromised by the recent decision to hold a
General Election in the UK in June. There is speculation now
that it will come into effect in the spring of 2018. For that
to happen, a few things need to be achieved. First and most
importantly, the UK and Germany have to complete the
ratification process. Things can change daily relating to this
agreement, it's important to continue to be on the lookout for
updates and announcements, specifically relating to the United
Kingdom's level of involvement.
Are all EU countries signed up to participate in the
Justin Simpson: No. Currently, 26 of the 28
member countries are signed up to participate –
including the United Kingdom. As of today, Spain and Croatia
have still chosen not to participate in the agreement. Remember
too, that the European Patent Convention covers 44 countries,
so the UP doesn't (and won't ever) cover all of those non-EU
countries. Applicants need to pay close attention to which
countries on their list are covered or not and seek
professional advice if they are unsure.
If you could have a guess, which industry is set to benefit
the most from the UP?
Justin Simpson: Industries such as pharma
which tend to file in the largest number of countries would
stand to benefit with a reduction of their translation and
filing costs. However, they have their doubts too. The
hesitation we are hearing is whether to put all their eggs into
one basket. A negative result in a UPC court is a negative
result in up to 26 countries. They won't have the opportunity
to forum shop, getting a positive result in a pharma-friendly
jurisdiction which they can use as a negotiating tool
elsewhere. It's a complex issue, which each applicant needs to
consider from their own strategic viewpoint.
Do you foresee this becoming the dominant way to file
Justin Simpson: As the UP was created to
coexist with existing filing systems, I don't foresee it
immediately taking the place of European validation. My best
bet is that companies will use the UP for some patent
applications and traditional validation for others. I also
foresee a slow start, where companies wait to read the results
of the first few UPC cases. A company's IP is often its most
important asset, and it's something CEOs are reluctant to
experiment with. In time, the UP may become popular at the big
end of town if concerns about the UPC and the role of the UK
are allayed, but the big end of town will take time to embrace
such a change.
Cost savings can be a driver to filing via the UP, what are
Justin Simpson: There are two main
negatives: One is that you are entrusting your patent rights to
a single court covering 26 countries. If you lose that case,
all rights throughout Europe are lost. The second is that if
you only want to protect your patent in a limited number of
countries, it's actually cheaper to use traditional validation.
This is true of many companies who probably won't find the UP
that useful. So the cost savings are most significant for the
broadest filers and are either moderate or negative for narrow
filers but again companies have to determine whether any
savings outweigh the uncertainty surrounding the role of the UK
and the UPC.
Once this agreement is ratified and implemented throughout
Europe, where should applicants look to file UP
Justin Simpson: The UP system, especially
in its infancy, will be rather complex and it will be hard to
keep track of all the changes. Specialist foreign filing
providers such as RWS spend all of their time on this topic, so
we’re a great resource to tap into.
We’ve recently built a one-click cost calculator
which is connected to our filing platform, inovia. This tool
helps applicants and law firms understand the costs of the UP
versus non-UP routes so they can make informed decisions. We
are excited about the launch of our calculator and are looking
forward to assisting applicants and law firms during this
evolution of European patent law.
||Justin is an Australian
patent attorney who is the founder of inovia (now known
as RWS Inovia). Prior to founding Inovia, Justin worked
as a software-specialist patent attorney for a number of
leading Australian attorney firms and companies. He holds
degrees in law and computer science from Sydney
University and brings a global perspective to issues
related to foreign patent filing.