The biggest change
to European Patent
Law in 50 years
The Unitary Patent &Unified Patent Court

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Script IP UP and UPC updateYou may have heard that patent law
in Europe is changing. The final steps
have been taken to bring those changes
into play. There are now new ways foryou to protect your commercial interests
in Europe.

The “Unitary Patent” and the “Unified
Patent Court” are exciting developments
in European patent law.
The Unitary Patent offers new flexibility andmay offer a cost-effective route to obtainpatent protection covering Europe compared
to using national validations.
The Unified Patent Court has significant
consequences in relation to infringement
and enforcement of patents.
There is no hiding from the additional
complexity and difficult strategic decisions
that the introduction of the Unitary Patentand the Unified Patent Court bring.

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Script IP UP and UPC update

Why change
anything?
The existing system overseen by theEuropean Patent Office results in grantof a bundle of national patents. Eachpatent in the bundle offers protection
in only one contracting state to theEuropean Patent Convention. As a result,some patent holders find that obtaining,
maintaining, and enforcing rights acrossEurope comes at significant financial
and administrative cost.
The Unitary Patent provides a route bywhich it is possible to obtain grant ofa single patent which offers protection
across a set of EU member states.
Holders of existing “European” patents willknow that enforcement or invalidation ofa traditional “European” bundle of patents
occurs on a state-by state basis.
To support the introduction of the Unitary
Patent, a new court system has beencreated. The Unified Patent Court willoffer a forum in which disputes relating
to a unitary patent will be decided. As aresult, one judgment could mean a loss
or win which has effect across all unitary
patent states.

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When do things change?
Germany put the final piece of the puzzle
into place in February 2023, and the new
system will commence on 1 June 2023.
Why do I need to consider
these changes?
If the protection and exploitation of
intellectual property in Europe is important
to your commercial activity, you should
consider the impact of the introduction of
the Unitary Patent and the Unified Patent
Court on that activity.
The arrival of the new system means that
there are new choices to be made about
how to protect an invention in Europe.
We can help guide you through thosechoices.
In relation to new European applications
and European applications currently inprosecution, the choices to be made relate
to whether you obtain a Unitary Patent,
continue to validate nationally, or whether
to proceed with a combination of both.
In relation to the Unified Patent Court,
the choices relate to whether you wantyour European patents to fall under thejurisdiction of the Unified Patent Court.
This is a choice that needs to be madein relation to existing European patents,
new European applications and those
European applications currently inprosecution.

The Unitary
PatentWhat is a“Unitary Patent”
What is a “Unitary Patent”?
The Unitary Patent is an indivisible patentright which will be renewed, amended,transferred, revoked or lapse in respectof ALL the participating Member States.
The idea underlying the Unitary Patent
was to provide a single patent rightwhich covered all European Union (EU)Member States.
“Was”?
The legal framework underlying the
Unitary Patent is set out in EU Regulations:
EU Regulation 1257/2012https://eur-lex.europa.eu/legal-content/EN/
TXT/?uri=celex%3A32012R1257&

The Unified Patent
Court will open andUnitary Patents will
become available
on 1 June 2023

https://eur-lex.europa.eu/legalcontent/
EN/T/?uri=CELEX%3A32012R1260&q
id=1648813060412
Currently some EU Member States (Spain,
Croatia) have chosen to remain out of theagreement, so the Unitary Patent, at least
initially, will not be a true “EU patent”.
So a Unitary Patent won’t cover allof Europe?
EU Member States which have not ratified
the Unified Patent Court Agreement
and non-EU Member States which arecontracting states of the European patent
Convention (for example, the UK and
Switzerland) cannot be covered by a
Unitary Patent. You can, however, obtainpatent protection in those countries,
for example, by nationally validatinga granted European Patent.

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Where WILL a Unitary Patent
have effect?
The answer to this question is one which
you will need to revisit each time one ofyour European patent applications moves
towards grant, particularly in the earlyyears of the Unitary Patent.
A Unitary Patent covers those EU Member
States which have(i) Agreed to be Contracting Member
States of the Unitary Patent andUnified Patent Court systems; AND(ii) Ratified the Unified Patent Court
Agreement at the date that apatent owner registers a requestthat a patent has unitary effect
As of 1 March 2023, the following EU
Member States have completed theirratification: Austria, Belgium, Bulgaria,
Denmark, Estonia, Finland, France,
Germany, Italy, Latvia, Lithuania,
Luxembourg, Malta, Netherlands, Portugal,
Slovenia, and Sweden (17 countries).
https://www.consilium.europa.
eu/en/documents-publications/
treatiesagreements/
agreement/?id=2013001
When can we start obtaining Unitary
Patent protection?
The Unified Patent Court will open andUnitary Patents will become available on
1 June 2023.

EPC
and UPC
Comparison

EU and EPC country
which has joined the UPC
EU and EPC country
intending to join the UPC
EU and EPC country which hassigned but not ratified UPC
EU and EPC country not joining UPC
Non-EU EPC country which cannot join UPC

Country

EPC Contracting
State

AL

Albania

EU and EPC country
which has joined
the UPC

AT

Austria–BE

Belgium––

BG

Bulgaria

CH

Switzerland

CY

CyprusCZ

Czech Republic

DE

Germany–

DK

Denmark––

EE

Estonia

ES

Spain

FI

Finland––

EU and EPC country
not joining the UPC–

FRFranceGB

United Kingdom

GR

GreeceHR

Croatia

HU

Hungary

IE

IrelandIS

Iceland

–
–
–
–

IT

Italy

LI

LiechtensteinLT

Lithuania–

LU

Luxembourg

–
–

LV

LatviaMC

MonacoME

Montenegro

MK

North Macedonia

MT

Malta

–

NL

Netherlands–

NO

NorwayPL

Poland––PT

PortugalRO

Romania

RS

SerbiaSE

Sweden–SI

Slovenia–SK

SlovakiaSM

San Marino

TR

Turkey––39 Total

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EU and EPC country
intending to join the UPC

17 Total

Script IP UP and UPC update

4 Total

3 TotalThe Unitary
PatentHow will I protect my inventions in
Europe when the Unitary Patent starts?
The prosecution phase in Europe when
the Unitary Patent starts is absolutely
identical to the one you know and love:
it is overseen by the European Patent
Office and the governing law in relation
to patentability remains that set out inthe European Patent Convention.
Significant change only comes into playwhen an application being prosecutedat the European Patent office enters the
grant stage.
Unitary Patent or stick with validationin each country of interest?
Once an application enters the grantphase you will need to decide in which
European countries you want to obtainpatent protection. If the countries ofinterest include any of the 17 which could
be covered by a Unitary Patent you willneed to decide whether to cover thesecountries by validation in that country
or by applying for a Unitary Patent.

If you choose to proceed via a Unitary
Patent, you will obtain protection in all UP
countries. You cannot obtain protection
in a UP country via both a Unitary Patent
and a national validation. For example,
you cannot obtain protection in France
by validating in France and by choosing
to proceed and obtain a Unitary Patent.
For countries which are not covered by
the Unitary Patent you can simply continue
to validate the granted European patentin each country.
It is possible to obtain protection in Europe
using a combination of a Unitary Patentand ‘classical’ European patent countryby-country validations (in countries
which are not Unitary Patent countries).

Illustrative example of ways protect
an invention in Germany, France, Spainand the UK:
Traditional European Route(Still available even when Unitary Patent available)
Applications to EPO– Apply– Prosecute

Grant

Validate

Germany

Validate

FranceValidate

Spain

Validate

UK

Unitary Patent(Alternative when Unitary Patent becomes available)
Applications to EPO– Apply– Prosecute

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Grant

Script IP UP and UPC update

RequestUnitary effectGermany France plus
all the other UPC
contracting states

Validate

Spain (EU but not party to UPC)

Validate

UK (non-EU)

The Unitary
PatentWhat do I need to do at grant stage?
You can obtain a Unitary Patent by filinga request for unitary effect at the EPO
within one month of grant of aEuropean patent.
The request for unitary effect does nothave an associated EPO official fee. In
order to obtain a Unitary Patent it will
be necessary to file a translation of thecomplete European patent specification.

Page_7For European patents which have beenprosecuted in English, a translation of theentire specification into any other official
language of the EU will be required.
What actions need to betaken and when?
An approximate timeline for actions
to be taken:
In view of the short deadline for filing arequest for unitary effect, you should start
to consider how it might be best to protect
your invention in Europe at the time that
the EPO indicates the application is inorder for allowance.

TimingActionT=0

Approval of text for grant in response to Rule 71(3) Communication+4-6 weeks

Date of Grant of the European Patent

1 month after Date of Grant

Deadline for requesting unitary effect leading to UNITARY PATENT

3 months after Date of Grant

Deadline for completing national validations leading
to NATIONAL PATENTS

Script IP UP and UPC update

The Unitary
PatentDo I want one?
The Unitary Patent offers new ways toprotect inventions in Europe. There is no
single approach which will be the right
one for everyone. Whether the Unitary
Patent and Unified Patent Court offer
an attractive option to you will depend
upon the nature of your business andyour commercial strategy in Europe. It is
possible for some clients that the Unitary
Patent option will need consideration eachtime an application proceeds to grant.

Maintaining a Unitary Patent
If you have an existing European patentportfolio, you will know that after grant ofa European patent, renewal fees become
payable annually in each country thatyou have chosen to validate your
European patent.

Geographical Coverage
If you only do business in a small numberof the Unitary Patent countries, theUnitary Patent may not be an attractive
prospect. Conversely, if you see value inhaving patent protection in many (or all)of the Unitary Patent countries, you may
see immediate value in obtaining Unitary
Patents.

Annual renewal fees will also be payable
to maintain a Unitary Patent. The levelof the renewal fees for the Unitary Patenthas been selected to be approximately
equivalent to the cost of maintaining a
traditionally validated European patentin the four biggest Unitary Patentcountries.

Cost of a Unitary PatentThis is likely to be a key driver.
Prosecution
The cost of prosecution to the pointof grant of a European patent will notchange.
Obtaining a Unitary Patent
Whilst there is no official fee associatedwith a request for unitary effect, there
will be some administrative costs and thecost of obtaining a translation of the full
specification.
Whether optaining a Unitary Patent iscost-effective in the short term is likely
to depend upon how many of the Unitary
Patent countries are of interest to you:
If you require protection in only a handfulof countries, the cost of validating thepatent in those countries may be lessthan the cost of providing the translationneeded to obtain a Unitary Patent;
conversely if you require protection ina large number of the Unitary Patent
Countries, obtaining a Unitary Patent
may offer an immediate cost saving.

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The ongoing cost of maintaining patent
protection across many countries in
Europe can be significant.

Some clients (those that usually validate
in a large number of countries) will
therefore be able to reduce their patentmaintenance costs by using the Unitary
Patent.
It is, however, not possible to pay a Unitary
Patent renewal fee for only some of the
Unitary Patent countries and so the costof renewal cannot be reduced by droppingsome countries and having a Unitary
Patent means that the territorial scopeof protection (for the UP countries) cannot
be tailored during the life of the patent.

The Unified
Patent Court

The UPC
A key feature of the Unitary Patent is theintroduction of the Unified Patent Court(UPC). The UPC is a new forum in which
disputes relating to a Unitary Patent will
be decided. As a result, one judgment
could mean a loss or win which has
effect across all Unitary Patent states.
The likelihood of litigation in yourbusiness sector will determine whether
the UPC is a key factor for you to consider.
What is the “Unified Patent Court”?
Under the existing regime, a granted andvalidated European patent will be litigatedseparately in each validation country.
A decision by a national court in one
country has no binding effect upon thevalidity or infringement of that European
patent in another country. Parallel litigation
to enforce or defend rights across Europe
results in significant cost, uncertainty
and inconsistency.
The Unified Patent Court offers a route bywhich decisions on infringement and/or
validity of European patents can be madeand have effect across all participating
countries.
The countries which have signed theUnified Patent Court agreement willtransfer jurisdiction in relation to European
patents and SPCs from their national
courts to the new centralised court.
Which patent rights can be litigatedat the Unified Patent Court?
The Unified Patent Court will havecompetence to decide matters of
infringement and validity. Decisions of
the Unified Patent court will have effectacross all Unified Patent Court
Agreement countries.
An action can be brought at the Unified
Patent Court on the basis of:European Unitary Patents
All granted European patents for which an
applicant files a request for unitary effectwill fall under the jurisdiction of
the Unified Patent Court.
Existing European Patents and SPCs
(which have been validated in one ormore countries which are party to the
Unified Patent Court Agreement)
In order to provide the Unified Patent
Court with a workload, existing validated
European patents have been
automatically “opted in” to the Unified
Patent Court system.
During a transitional period of at least
7 years, it will still be possible to start
litigation in relation to a traditionallyvalidated European patent in a national
court, rather than at the Unified Patent
Court.
My existing rights have been “opted in”?
The automatic opt-in represents asignificant change to all those who havetraditionally obtained European patentrights and, to counteract that significant
change, an ability to “opt out” has also
been introduced.
The ability to opt out is only available
during the transitional period. Use of the
opt out can help a patent proprietor toensure that proceedings can ONLY be
brought in the national courts.
In other words, using the opt-out allows
patent proprietors who already havetraditionally validated European patents
to maintain the status quo.
After the transitional period, in relation
to the Unitary Patent Countries, the Unified
Patent Court will have jurisdiction over all
patents granted by the EPO whether
Unitary patent protection, or national
validation is selected.
Once the transitional period ends, theonly way to avoid being pulled into thejurisdiction of the Unified Patent Court
will be to file separate national
applications at the relevant national
patent offices of those countries which
are signed up to the Unitary Patent andUnified Patent Court Agreement.

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The Unified
Patent Court

Good or bad?
The Unified Patent Court offers newopportunities for both patentees and otherlitigants. Whether those opportunities are
attractive will depend upon the natureof your business and the commercial
strategy employed by you, and yourcompetitors, across Europe.
If you and your competitors are highly
unlikely to litigate, the potential costadvantages offered by the Unitary Patent
may override any potential commercial
risks associated with falling under thejurisdiction of the Unified Patent Court.
Nonetheless, it is important that you
consider how some of the main featuresof the Unified Patent Court might play into
your commercial strategy across Europe:

One action for infringement will coverat least 17 key European countries,
offering a patentee the opportunity
to obtain a multi-country injunction
or multi-country damages via a single
action.
A third party can bring a “central”
revocation action against a patent after
expiry of the EPO opposition period
Infringement and validity issues may
be settled via a potentially simpler andcheaper process than proceeding via
national courts
The UPC is a new, untested system
which may be difficult to predict,at least in the early years.
We will help you understand which ofthese changes might help, or hinder, yourcommercial activity in Europe. Together
we can make decisions which represent
the best approach for your business.

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Script IP UP and UPC update

The Unified
Patent Court“Opting out”

Can we just keep things as they are?
If your existing validated European patents
are key to your commercial strategy you
may decide that you do not want to run
the risk of central revocation.
The UPC system may make it easier for
third parties to achieve central revocationof a European patent across all UPC states.
Indications are that some patent proprietors
will choose to opt out key patents of highcommercial value until it is clearer how the
UPC system will function.
If you would prefer that your existing
validated European patents do NOT havethe potential to be litigated under the Unified
Patent Court during the transitional period,
we will need to take action to maintain thestatus quo and opt them out.
What happens if we do nothing?
When the UPC comes into force on June 1,
all validated European patents automaticallyfall under the jurisdiction of the Unified
Patent Court.
If you do nothing your European patentvalidations in Unitary Patent countries
automatically fall under the jurisdiction of
the UPC (but, at least for the duration of thetransitional period, may also be litigatedunder the national court system).
The only way to avoid falling under thejurisdiction of the Unified Patent Court
during the transitional period will be toactively opt out of the Unified Patent Court.
If you want to be sure that your patents
will not run any risk of falling under thejurisdiction of the Unified Patent Court,
you will need to get your opt out filed
BEFORE the UPC comes into force.

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Script IP UP and UPC update

The 1 March 2023 marks the beginning of athree month ‘sunrise’ period before the UPC
becomes operational. During the sunrise
period proprietors will be able to lodge their
opt out, so that it is effective from the very
start of the new regime on 1 June 2023.
If you are sure you want to opt out, werecommend that we take steps to file
your opt outs during the sunrise period.
Opt-outs can, however, be filed up to theend of the transitional period (currently
seven years from when the UPC comes
into force).
What can be opted out?
Any relevant conventional European
patent can be opted out provided it has
not already been litigated before the UPC.
Only conventional validated European
patents can be opted out. Unitary
Patents cannot opt out of the jurisdictionof the UPC.
An opt-out lasts for the life of the European
patent (unless the opt-out is withdrawn).
Where there are supplementary protection
certificates (SPCs) attached to a patent,
the two rights must be opted out together.
It is not possible to opt out an SPC without
the associated patent, and vice versa.
If you opt out, all of the bundle of European
patents which have been validated in a
Unitary Patent country are opted out. It is
not possible to split the bundle. They are
ALL opted in, or ALL opted out.
European patent applications can also
be opted out and the opt out remains inplace at grant stage. If you choose toproceed with a Unitary Patent at grantstage, the patent will automatically be
opted back in to the UPC.

The Unified
Patent Court

How do I opt out?
The opt-out procedure will only be available
for the transitional period (currently sevenyears from when the UPC comes into force).
The opt out needs to be filed at the UPC,
rather than the EPO. The opt-out has tomeet certain formal requirements.
If the formal aspects of the opt out areincorrect, the opt-out will be invalid:
What are the formal requirements?
The right to opt out can only be exercisedby the entitled proprietor or applicant.
If there is more than one entitled proprietor,
all proprietors must agree.
The proprietorship rules also apply to
SPCs which means that if an SPC andrelevant patent are in different ownership,
all owners must agree before a valid opt out
can be filed.
A declaration or mandate must be filed toconfirm that the application is made by the
person entitled to opt out, and on behalf of
all relevant proprietors. We will be authorised
to act for you before the UPC and so,
provided the other formal requirements aremet, we can help you to file effective opt
outs at the UPC.

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Script IP UP and UPC update

We got it wrong - can we opt back in?
It is possible also to apply to opt back into the UPC. Opting back IN can only bedone once. It will not be possible to opt
back out again.
Opting back in is only possible if thepatent has not been litigated before
a national court.
I’m confused! To opt out or not?
We know it seems complicated. Your
attorney at Script will help you find a solution
which best supports your circumstances.

How canScript IP help?

We have proven knowledge and experience of patent
strategies which support all commercial approaches. We
are closely following developments in European patent law
and will guide you through the changes ahead.
We will help you understand which changes might help,
or hinder, your commercial activity in Europe. Together we
can make decisions which represent the best approach foryour business.
Our attorneys will be by your side from the moment the
Unitary Patent and the Unified Patent Court become
available.
Want a Unitary Patent?
We can help you get one.
Want to opt your existing European patents
out of the jurisdiction of the Unified Patent Court?
We can do that.
Want to litigate using the Unified Patent Court?
We can handle that too.

For more information on
how we can help please getin touch

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Script IP UP and UPC update