Top five UPC considerations for patentees

There are two major decisions for patentees ahead of the launch of the Unified Patent Court (UPC) and unitary patent: 1) do you want to opt your patents out of the jurisdiction of the new court?; and 2) will the new type of patent be attractive to your business?

The decision about the opt-out is likely to be the most time critical—we envisage starting to file opt-outs in September 2017 during a sunrise period before the UPC opens its doors.

"If you decide to exercise the opt-out, it is important to ensure that the correct party or parties exercise that opt-out to ensure that it is validly executed."

How do you decide which existing European patents to opt-out of the jurisdiction of the UPC?

Imagine your patent portfolio is like your record collection: here are our “top 5” considerations in the months counting down to the start of the unitary patent and UPC.

What is in your collection?

Get to know your “back catalogue”—knowledge of your patent portfolio is vital to prepare it for the UPC. Companies can often have such a diverse range of business relationships and collaborative projects. It is vital to know whether you own the proprietary rights of the patents in your back catalogue, so get this straight now. Only the person who is entitled to be the owner of a patent can exercise the opt-out.

What are your “greatest hits”?

Understanding what patents are most important to your business is key for deciding what you will want to opt out. Will you want to be able to enforce your most important patents centrally at the UPC? Or will you want to opt them out and avoid the UPC and the risk of central revocation? Remember that you can always withdraw an opt-out at a later date (if you want to use the UPC), but only if no national proceedings have been commenced in relation to the patent.

A sides, B sides or albums?

Even if there is only one decent track, it’s the whole album that matters. The opt-out applies to the entire European bundled patent for all UPC member states where each particular patent has been validated.

Whether you should opt out your granted and pending European patents from the jurisdiction of the UPC will depend on many factors: there is no one size that fits all. Patentees shouldn’t assume that opting out will be the best option. There may be advantages to keeping at least some of your patents within the jurisdiction of the UPC.

As details of the rules and procedures for the UPC system have crystallised, many patentees are considering a nuanced approach to managing the opt-out (or remaining subject to the UPC’s jurisdiction) for their patent portfolio.

Duets and featured

Who have you collaborated with? Patents under joint ownership or co-ownership (ie, where different validations are owned by different owners) create their own issues in relation to the UPC. The immediate concern is exercising the opt-out. Absent any agreement to the contrary, if a European patent is under joint or co-ownership, it can only be opted out of the jurisdiction of the UPC if all the owners of the European patent agree to the opt-out. If there is no agreement then the opt-out cannot be exercised validly.

If you decide to exercise the opt-out, it is important to ensure that the correct party or parties exercise that opt-out to ensure that it is validly executed. If you fail to validly opt out, then there is a risk that competitors might seek to revoke the patent centrally at the UPC.

Future hits

Some of your best inventions may be patent applications that aren’t yet granted, or even filed yet at the European Patent Office (EPO). Could these “future hits” benefit from becoming a unitary patent?

Once it goes live, the system will be available to all patents that are pending, not just new applications. One of the potential advantages of a unitary patent is the opportunity to obtain wider territorial protection with a lower renewal expenditure and reduced administration costs over the lifetime of a patent.

So if you have a patent currently pending at the EPO, if you think there would be benefit in obtaining unitary protection, or in any event if it is likely to go to grant soon, you could consider slowing down the grant process or filing a divisional application, to keep the unitary patent option alive.

To obtain a patent, an applicant must file a request for unitary patent protection at the EPO no later than one month after the mention of grant of the patent is published. This is a shorter deadline than patentees are currently used to for validating their European patents.

Martyn Fish is a partner at HGF. He can be contacted at: mfish@hgf-law.com

Estelle Senior is a professional support director at HGF. She can be contacted at: esenior@hgf.com