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Unitary Patent Oddities: What You Might Not Know About the UP

By Guy Brain
Unitary Patent Oddities: What You Might Not Know About the UP

We all know about the unitary patent (UP): a single patent right giving you protection in a group of EU member states that have signed up to the UPC agreement (currently 17 states). The UP gives you broad geographical protection for a lower cost than the corresponding national validations and is enforceable in a single action through the Unified Patent Court (UPC). Easy. Well, here are some things you maybe didn't know.

    • When the UPC opens its doors, newly registered UPs are expected to cover 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden. You might expect that a UP would have the same geographical scope as a classical European patent validated in those 17 countries. It seems that this is actually not quite the case: there are some countries where a national validation of a European patent may cover overseas territories that are not covered by a UP. This depends on the extent to which the EU legislation on which the UP is based has effect in those overseas territories. An example is France. As it stands, a French validation of a European patent may cover French Polynesia and New Caledonia, but a UP cannot. This means that there can be a difference in scope between a unitary patent and a European patent validated in the counties taking part in the UPC system.
    • A UP covers the territories of the participating member states which had ratified the agreement relating to the UPC on the date the request for unitary effect for the European patent is registered. This is likely to be at least a few days after the unitary effect is requested. A consequence is that an applicant will not know for certain what countries will be covered by the UP when they first request unitary effect! It is possible that a country could deposit ratification of the UPC agreement in between the date of request and date of registration for unitary effect.
    • Several EPC member states have rules relating to double patenting between an existing national patent in that country and a national validation in that country derived from a European patent. For instance, some countries will not allow a national patent and a European patent covering that country to have the same scope. One would assume that these rules will apply equally for classical validations of European patents as they would for UPs. Not so for Estonia: the EPO’s "National Measures Relating to the Unitary Patent" explains that the Estonian legislators have taken the view that, while double patenting between a national validation in Estonia and an Estonian national patent is prohibited, it is permissible for a UP and an Estonian national patent to coexist. The justification given is, perhaps not unreasonably, that an Estonian national patent and a UP have different geographical scopes, even if they cover the same subject matter.
    • It is necessary to include with the request for unitary effect a translation of the entire text of the European patent. There are various considerations about the most cost-effective way to do this: a Spanish translation would be sensible if you also validating in Spain or you could simply go for the lowest-cost translation into an EU language (perhaps Bulgarian). One might expect therefore that when a European patent is maintained in amended form following an opposition, that an updated translation of the European patent would be required, in the same way that a patentee would need to file updated French and German translations of the claims. Not so. It turns out there is no need for such a translation on the basis that the full-text translation for the unitary patent is "for information only". One does wonder however how useful that "information" will be if it does not in fact correspond to the text of the patent in force following an opposition.
    • A request for unitary effect must be filed within one month of the grant date. There is a chance that the request could be rejected. For instance, the applicant could fail to notice that the European application has different claims for different states, or the applicant could fail to provide an appropriate translation in due time. Furthermore, it may be that the request for unitary effect is only rejected at a later stage after the deadline for national validation in certain countries has passed. There might not, therefore, be time to get national validations in lieu of a unitary patent if the request for unitary effect fails. Fortunately, most countries taking part in the UP are providing a "safety net" in their national law which means it will be possible to validate a European patent late in that country if a request for unitary effect has been rejected. So far so good. However, this does seem to raise the possibility for reviving national validation deadlines for European patents when those validation deadlines have been missed. Could an applicant file an obviously late request for unitary effect, say, eight months after the grant date which would be rejected and then rely on that rejected request for unitary effect to make use of the safety net provisions to validate a European patent late in a number of countries? This is against the spirit of the safety net, but it may nevertheless represent an opportunity to save a European patent where all validation deadlines have been missed.
    • A UP is a unitary right. It has been made clear that you cannot assign part of a UP to another party. If a UP grants with one applicant for all states then it can only be assigned as a whole to one or more assignees. However, the fact that a European patent application has different applicants for different states (e.g. company A for Germany and company B for all other states) does not make a European application ineligible for unitary protection. It seems therefore that you could "bake in" different owners for different states in a UP based on an application with split ownership in this way. The question remains, however, if and how each of the owners could then separately dispose of their parts of the UP by assignment.

These are some of the more obscure aspects of the UP system. Time will tell how relevant some of these considerations are. Furthermore, uncertainties remain around several key aspects of the UP. How exactly will infringement be assessed? How will considerations of divided infringement (e.g. different steps of a multi-step process being conducted in different countries) and contributory infringement play out for a UP once the UPC has opened? We will have to wait and see.