4 April 2022

Unitary Patent & Unified Patent Court: A dramatic change but don’t be blinded by the light

The new system will represent the most wide-ranging change to the European patent system since the adoption of the European Patent Convention (EPC) in 1977 offering the chance to litigate patents in multiple European jurisdictions in a single procedure and a process for obtaining a UP right in those countries. However, this is fundamentally a new package of options bolted on to the structures already in place – the complexity of the changes and the slow-burn to final adoption has led to some overreach in expectations. In the excitement and noise surrounding the dawn of a new era, here are some key points which will not change:

1. The European Patent Office’s (EPO) existing role is unchanged

At heart, the UP/UPC is trying to complete a process of harmonisation that has remained partial since the founding of the European patent system. The key to originally achieving this partial harmonisation was to recognise a distinction between pre-grant and post-grant proceedings. The EPO was set up to handle prosecution up to grant, and had a limited role post-grant (with the significant exception being Opposition procedure – also unaffected by the introduction of the UP/UPC system).

The UP/UPC is designed to complete harmonisation by addressing post-grant issues, and so does not affect the EPO’s existing role. The EPO will have a new role maintaining the register of UPs, and is certainly an interested party in the development of the European patent system, but users of the office will see no change in the prosecution procedure up to grant.

2. There is no change to the ability to obtain or enforce patents in countries that are not participating in the UP/UPC system

17 countries will take part in the UP/UPC system when it starts. This means that the majority of the 38 EPC nations will not be part of the system, at least initially. The countries not taking part include a mixture of European Union and non-EU nations – among them the United Kingdom, Spain, and Poland – the route for obtaining patents in those countries through the EPO process remains the same, as does enforcement through the relevant national courts.

3. The transition period has no consequence outside of the participating states

The transition period is a complex beast. In essence, it allows a soft start to the use of the UPC, ensuring patent proprietors retain the option to use existing courts in UPC participating countries if they prefer for a limited period (seven years initially, although there is the possibility for this to be extended). However, while this does mean that after the period ends the new system will be somewhat more rigid, this transition by its nature only applies to countries participating in the UP/UPC system. There will be no change to the routes to grant (including via the EPO) in European countries not participating in the UP/UPC, or indeed to post-grant litigation procedures in those countries, once the transition period ends.