UPC v EPO – European Patents

Posted by Martin Earley on

UPC v EPO – European Patents

There are currently two broad approaches to obtaining protection in a European country. The first is by direct filings into the countries of choice and the second is via a European regional patent application via the EPO (European Patent Office).

It is likely that in late 2022 or early 2023 a new third approach will become available via what is known as the UPC (Unified Patent Court).

Existing Approaches to Obtaining a Patent in a European Country

  1. Patent protection can be filed directly in some European countries. Such filings are not European patent filings but national applications. Many European countries have closed this route to make use of streamlined European examination (see “No – must go through EPO” countries in Appendix). This direct patent filing approach is still possible in some countries (see “Yes” countries in Appendix) including the United Kingdom and Germany.
  2. The second method is to file a European patent application through the EPO (European Patent Office). This is a system that can result in patent protection in individual European countries and involves a centralised examination system at the EPO. Enforcement under the EPO is managed country by country.

This EPO system has been in operation since the 1970’s and covers up to 38 European countries, including the United Kingdom (as it is not related to the European Union). (see EPO countries in appendix – see “EPO-L” for countries that do not require translations into their language under the London Agreement).

A New Approach to Obtaining European Protection under the UPC

A new approach to obtaining European protection through the UPC (Unified Patent Court) will likely become available from late 2022 or early 2023. The first Unified Patents (Ups) will extend to at least 16 countries with the number of countries available likely increasing over time but not including the United Kingdom (as UPC is related to the European Union). Enforcement under the UPC will result in decisions that apply to all of the UPC countries.

Trigger of UPC

The UPC presently covers 16 countries (see UP countries in Appendix – these have signed and ratified) and must initially include three primary countries (see UP* of France, Germany and Italy) to commence. These are those countries that have filed the most EPO patents in previous years. At present, France and Italy have fulfilled all requirements. Germany has only signed and still needs to ratify. This is expected at any time soon.

The UPC will eventually have exclusive competence in respect of all European Patents. This will cover countries that have ratified the UPC Agreement and are members of the European Union. Presently there are 7 other European countries that have signed but not yet ratified the agreement (see UP-SNR in the Appendix).

Decisions of the UPC will apply to European patents in all states that have ratified the UPC Agreement. Therefore, since all of the 38 European countries of the EPO are not part of the UPC, there will be two systems for the foreseeable future.

New European Patents

In the new system when progressing through the European examination and grant process it will be possible to opt out of applying for a Unified Patent under the jurisdiction of the UPC.

UPC – Opt In / Opt Out

Although the UPC will eventually have exclusive competence in respect of all European Patents (Eps), it will be possible to opt out of the system during a transitional period. This transitional period will initially last for seven years, although it may be extended by a further seven years. Some issues for applicants to be aware of include:

  • Once opted out, the patent or application will not be subject to the UPC.
  • Patents validated as UPs cannot then be withdrawn from the jurisdiction of the UPC.
  • With no action, the EP will automatically fall into the UPC system.
  • If action of infringement or revocation is undertaken under UPC it remains under UPC and applies to all UPC countries.
  • Any EPs and applications for which an opt-out request is registered during the sunrise period will not fall into the jurisdiction of the UPC.
  • The opt-out can be filed at any time during the seven-year transitional period.
  • The Opt out right is single use – if an opt out is withdrawn, there is no second opt-out available.
  • Only the actual owner (not merely the registered owner) can opt out.

Further Action

Baxter IP will monitor the progress of the UPC and its imminent commencement. We will be in touch to assist in decision making in respect of selecting to use the UPC for protection, enforcement or for challenging current European patents or patent applications. An applicant’s choice of pathway for European patents will vary according to their commercial interests. We will consult with clients in respect of their European applications as matters develop.

If you have any immediate questions, please contact us.

Appendix

CountryEPO (L- London Agreement)Individual from PCT (No – must go through EPO)Unitary Patent (SNR – Signed Not Ratified)
AlbaniaEPO – LYes 
AustriaEPOYesUP
BelgiumEPONoUP
BulgariaEPOYesUP
CroatiaEPO – LYes 
CyprusEPONoUP – SNR
The Czech RepublicEPOYesUP – SNR
DenmarkEPO – LYesUP
EstoniaEPOYesUP
FinlandEPO – LYesUP
The Former Yugoslav Republic of MacedoniaEPO – LYes 
FranceEPO – LNoUP * (1 of 3 most EP patents in previous year)
GermanyEPO – LYesUP * – SNR (1 of 3 most EP patents in previous year)
GreeceEPONoUP – SNR
HungaryEPO – LYesUP – SNR
IcelandEPO – LYes 
IrelandEPO – LNoUP – SNR
ItalyEPOYes – for PCT filed after 1 July 2020.UP *  1 of 3 most EP patents in previous year
LatviaEPO – LNoUP
LithuaniaEPO – LNoUP
LiechtensteinEPO – LYes 
LuxembourgEPO – LYesUP
MaltaEPONoUP
MonacoEPO – LNo 
The NetherlandsEPO – LNoUP
NorwayEPO – LYes 
PolandEPOYes 
PortugalEPOYesUP
RomaniaEPOYesUP – SNR
San MarinoEPONo 
SerbiaEPOYes 
SlovakiaEPOYesUP – SNR
SloveniaEPO – LNoUP
SpainEPOYes 
SwedenEPO – LYesUP
SwitzerlandEPO – LYes 
TurkeyEPOYes 
United KingdomEPO – LYes