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1 June 2024

Unified Patent Court and Unitary Patent: one year on

1 June 2023 marked the start of the new era for patents in Europe, with the opening of the Unified Patent Court (UPC) and the advent of Unitary Patents (UPs). These initiatives supplement the long-established work of the European Patent Office (EPO) harmonising the grant of patents (and the widely used post-grant Opposition procedure at the EPO) with unified systems for post grant enforcement and maintenance of patent rights.

The logistical challenges involved in the establishment of the UPC and UP should not be underestimated, but both systems have hit the ground running. As can be seen from the statistics reported below, there is a strong interest in the wider territorial scope offered by Unitary Patents (in comparison with typical post-grant strategies for “classical” European patents) and plenty of interest in exploring the benefits of the UPC’s ability to enforce centrally, together with its procedural quirks.

In turn, the UPC has proved itself to be ambitious to show its value to users; high value has been placed on keeping the promise to resolve actions quickly, and there has been a willingness to make use of the significant injunctive powers available.

Unitary Patents

Unitary Patents sit alongside the classical option to “validate” patents granted by the EPO individually in member states. Patent proprietors will continue to have the option to cover participating states either through a Unitary Patent or via a “classical” validation at the point of grant.

A benefit of the UP option is that a single renewal fee is subsequently payable annually to maintain the patent, whereas coverage in all 17 participating states would previously have required the payment of 17 separate fees each year. Nevertheless, a question mark had existed over whether the UP renewal rates had been set at a level that would entice users to take advantage of the new system.

Some stats

In the event, while UPs remain a minority option, there is significant uptake. At the time of writing, more than 27000 UP requests have been filed. Perhaps significantly, the uptake rate in 2024 (at 23.8%) is meaningfully up from that in 2023 (17.5%).

The procedural language for UPs is English in nearly three quarters of cases, with German taking second place at around 20%.

In terms of subject area, using the IPC categories, “Medical technology” represents the biggest share of UPs filed by some distance with 3333 applications or 12.1%. See overall picture in graph below or have a look on the EPO website here.

According to the EPO’s statistics looking at the European proprietors’ profile, nearly 6 in 10 requests for UPs have come from large companies, SMEs or individuals have made 34% of requests and the rest came from universities and public research organisations.

In geographic terms, applicants from EPO states are providing the majority of UP requests (nearly 65%) – whether this is greater knowledge of the new system or greater commercial need time will tell. German applicants make the largest number of requests overall – with 18.1% – while applicants from the US provide 14.9% of requests. The statistics tend to suggest that local users are more comfortable with the system, and there is plenty of room for growth from non-European applicants.

A full breakdown can be found here on the EPO website.

The Unified Patent Court

The UPC has been busy, with the first year inevitably being a time where advocates have looked to identify the boundaries of the court’s operation. The Court has shown itself willing to set its own distinctive path; while the judiciary is drawn from the various of national traditions, the Court of Appeal in particular has been keen to emphasise that they sit as “UPC” judges and not French, Dutch, German and so on.

Early decisions have suggested a court that is hungry to fulfil its promise, keen to show users that it can be a pre-eminent jurisdiction for patent law not just in Europe but beyond as well. This hunger to exert influence can perhaps be seen in the way the court has considered its interaction with the EPO (see our discussion of the UPC’s attitude towards staying proceedings here or indeed in the approach of the court to the knotted question of bifurcation (see our discussion here). Of course, the court has also blazed a trail with landmark decisions on preliminary injunctions indicating that these could prove a powerful tool (as we discussed here).

One can see a seam of pragmatism in the decisions of the UPC to date as well – whether in its handling of the issue of transparency (where we were pleased to act as part of an international team of representatives seeking greater openness) as reported here or in the approach to languages reported here. The Court of Appeal’s decision to sit as a panel of three (rather than a full panel of five with two technical judges) in more cases than some argue was envisioned in the original UPC Agreement also emphasises this pragmatic note.

As of the end of April, official statistics from the UPC registry (data source here) suggested that the languages of the court were fairly evenly split between German and English, with a minority of cases in French, Italian and Dutch. Anecdotally, the suggestion is that the trend is towards English, and the court’s pragmatic approach has perhaps reinforced this at times.

As for the type of actions received, the same data indicates that the Court of First Instance has received a total of 341 cases since the start on 1 June 2023 until the end of April 2024, including:

  • 123 infringement actions
  • 30 applications for provisional measures, preserving evidence and orders for inspection
  • 32 revocation actions

Geographically, the court reports this cases to be distributed amongst the various divisions of the Court of First Instance as follows:

For further details and a full breakdown, check the UPC website here.

What’s next?

Venner Shipley has been a proud participant in the first year of the UPC’s activities, and we look forward to keeping our clients abreast of the latest developments over the coming months and years. In the short term we can expect some landmark decisions as those trailblazing actions filed in the early days of the court reach their conclusions (at first instance, at least) and over time we look forward to the role the UPC comes to play in the broader landscape of international patent litigation.

We are proud and excited to be part of this new era for patent protection in Europe. With over 50 UPC representatives at Venner Shipley, we are confident that our clients and associates have found the same diligence, technical know-how and responsiveness they are used to, and we will continue to provide a service to them in the new era of the UPC.

If you have more questions, please contact your usual Venner Shipley representative, or feel free to email upc@vennershipley.co.uk.

 

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