Saturday, 8 April 2017

Preparing for the Unified/Unitary Patent

Subject to any rebellion in Germany it now appears that the Community Patent will emerge from its enormously long gestation period in 2018. It won't be called a Community Patent it will be a "European Patent with Unitary Effect" mostly now called a  Unitary Patent (UP). There is Unitary Patent Package of legislation which seems to be where UPP comes from. The Package includes the arrangements for the Unified Patent Court (UPC). Not even the name is consistent so what can we expect of our attitudes to it.

I have just registered for the CIPA webinars which promise to help us get practical. Book soon the first is on 27 April 2017.  These webinars are free to members as it is considered desirable/essential that everyone who claims to be a patent attorney should be fully up to speed.

AIPPI also have en event on 31 May 2017 and you can book here. There should be a webinar for that too.

The main immediate concerns are
  • Choosing between an UP or a conventional EPO bundle when grant decisions are imminent after the package takes effect, and
  • Opt out of the UPC jurisdiction for existing European Patents 
The first concerns me most and I have been pondering the factors we need to put into the mix.
Is your client is exploiting the patent? are there licences? what are the probabilities of a dispute arising? what are the probabilities of an opposition? will your client want to maintain long term? does it  envisage significant growth or being bought out?

For what I would call the ordinary SME using its own patents, only filing for true innovation, and having a fairly parsimonious attitude to renewal fees the teenage UP would probably be an unlikely survivor but it is an easy choice in the early years. The fee scale was established in 2015 so these figures are probably going to increase before you pay them.

The other big issue for UK clients is Brexit and whether the European market is available for new innovations is accessible. Its also possible the unitary region wont include the UK after Brexit  but UK owners of UP will still be able to own them.

My current thinking is that the UP is good for optimistic entrepreneurs who see a growth future, but for the more established business who knows its market probably not.

To keep up to date follow BristowsUPC and for the progress of the court see the official Unified Patent Court site. You could also stroll past the court building in Aldgate and dream of appearing there


  1. As I see it, the main problem with a UK company filing a request for unitary effect is what happens post-Brexit. It would be unthinkable that the effect in the UK of a "unitary" patent would not survive the Brexit process (even if there needed to be some sort of conversion to a standard EP(UK) patent). However, it is most definitely a risk - especially as UK practice on "same invention" double patenting make it difficult and/or costly to put a "safety net" in place.

    Hard to provide sensible advice when that risk is unquantifiable, isn't it? This is why it is such a shame that the UPP will come into force without any of this being sorted out beforehand.

    1. Good point and I hope the Government will appreciate that a conversion solution for UK companies could be different than the one offered to the rest of the world. Normally I try where possible to take the UK priority application through to grant so that UK compannies have a fall back position at home