Earlier this year, AMUK member ValCUN BV obtained patent protection for its 3D printing extrusion technology across Europe, by taking advantage of the new Unitary Patent system.
The Unitary Patent Convention, or UPC, was launched in June 2023 and offers patentees the ability to simultaneously protect their technology in 18 EU countries. There is no official fee for requesting a Unitary Patent (UP), which can be kept in force by paying a single annual renewal fee, and the UP request need only be accompanied by a full translation of the patent in any EU language.
ValCUN’s patent application was filed at the European Patent Office (EPO) in May 2021 and went through the usual examination procedure, resulting in a notice of intention to grant being issued in June 2023. Following grant of the patent in October 2023, ValCUN chose to request a Unitary Patent covering 18 EU states, and provided a full translation of its patent in Spanish. Since not all 39 EPO member states are participating in the UPC, ValCUN also validated its patent in several non-UPC states, including Spain and Norway.
As a result, going forwards ValCUN will pay annual renewal fees individually in Spain, Norway, and any other states in which the patent has been validated, plus a single renewal fee covering all 18 UPC states. This is clearly a highly cost-effective way of obtaining patent protection across a range of markets.
The new UPC system is not just about the Unitary Patent, however. Also launched in 2023 was the Unified Patent Court, which has exclusive jurisdiction over all UPs, and also over all non-unitary European Patents validated in one or more of the EU Member States participating in the UPC Agreement. This means that patent owners can bring revocation and infringement actions in a central court, rather than in individual national courts. It also means that any UP that is revoked in this court is revoked in its entirety across all 18 UPC member states.
While a central court enables efficient and low cost UP enforcement, the flip side is that any existing non-unitary patent validated in a UPC state is also at risk of central revocation. For this reason, the new system offers patent owners of non-unitary patents the opportunity to “opt out” of the jurisdiction of the Unified Patent Court. Opt outs can be filed at any point after the application has been published, and is certainly something which patent owners should be considering at grant.
The launch of the UPC has no doubt increased the complexity and flexibility of the European patent landscape, and patent owners such as ValCUN can now protect their technologies in different markets using a range of strategies, tailor-made to their particular commercial requirements. Taking full advantage of today’s patent systems does require some thought, however, and this is where an experienced patent attorney can make all the difference.
To this end, Marks & Clerk has put together a free UPC hub, which provides insights on the latest case law and developments, together with FAQs and short videos which will guide you through the UPC system. And if you still have questions about the UPC, or about any other aspect of IP protection, our team of attorneys are always happy to arrange a free, no-obligation chat.
Marks & Clerk advises on all aspects of IP, including patents, trade marks, designs, contracts and contentious matters, and is an associate member of AMUK.