At Herrero&Asociados, H&A, we are fully available to our clients and associates to advise them on the most effective way to protect their inventions in Europe from an economic, strategic, and legal perspective.

 

First Anniversary of the Unitary Patent (UP) and the Unified Patent Court (UPC): June 1.

  • Objective of the UP: Protection in 25 countries at a significantly lower cost and a single forum for resolving disputes.
  • Actual Coverage: 17 countries (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden). Coverage excludes two major markets, the United Kingdom and Spain (which require national validation).

Jurisdiction of the Courts: The Unitary Patent is obligatorily subject to the UPC, while traditional European patents have the flexibility to choose between the UPC and national courts thanks to the opt-out mechanism.

Assessment after One Year of the System’s Operation

1. Unitary Patent Statistics from the EPO (end of May 2024):
  • 23.9% of all granted patents have requested unitary effect. Approximately 1 in 4 granted patents. This has increased from 2023, which was 17.5%indicating growing user acceptance. Interestingly, Spanish holders seem to have a greater interest in the UP, as 33.7% of Spanish-origin European patents granted have requested unitary effect.
  • The predominant language of these patents’ procedures is English (73.9%). Curiously, the most used language for meeting the translation requirements of applicants requesting unitary effect is Spanish. Since Spain is not part of the UP, full validation and translation into Spanish are required before the Spanish Patent and Trademark Office (OEPM) once the European patent is granted. Result of this strategy: optimization of translation costs in their global protection plan in Europe.
  • Regarding the origin of the holders requesting unitary effect: 64.9% are EPO member countries, followed by US applicants (14.9%) and Chinese applicants (5.5%). Spain still represents 1.61% of all UPs. There is little interest among non-European owners.
2. Acceptance of the UPC and Opt-out:

What proportion of patents have opted out versus all European patents that are still alive at the end of May 2024? Sources and tools for IP-intelligence:

  • 34.5% of all traditional European patents that are still alive (this also includes some applications) have opted out.
  • Therefore, 65.5% of traditional European patents are subject to UPC jurisdiction. European patent holders are mostly comfortable with their patents being subject to UPC jurisdiction. Forecast: Acceptance will continue to rise as the UPC issues rulings, creates a body of case law, and builds trust. Additionally, after the transitional period ends (when opt-out is no longer possible), the UPC will be the sole jurisdiction for all European patents.
Operation of the UPC Processing until the end of April:
  • 123 infringement actions (46 in the local division of Munich, 25 in Düsseldorf, 16 in Mannheim, 10 in the local division of Paris, 7 in Hamburg, 6 in the Nordic-Baltic regional division, 4 in Milan and The Hague, and 1 each in Brussels, Helsinki, Copenhagen, Vienna, and the central division of Paris).
  • 30 requests for provisional measures and 32 revocation actions, 28 in the central division of Paris and 4 in the central division of Munich. The language of the proceedings in the first instance procedures has mostly been English (48%), followed closely by German (45%) and much less by French (3%), Italian (3%), and Dutch (1%).

In the second instance,

  • 33 appeals before the Court of Appeal in Luxembourg.

A new section of the Central Division of the UPC in Milan will be operational by the end of June 2024.

Conclusions

Applicants who want to maximize their protection at the lowest possible cost and do not mind having their European patent under the UPC’s umbrella will likely opt for UP and also validate in countries of interest that are not part of the new system, such as Spain or the United Kingdom. Applicants interested only in protection in a limited number of UP countries (four or fewer) and also interested in protection in countries like Spain and the United Kingdom will likely continue opting for the traditional European patent route. In such cases, the cost will undoubtedly be lower, and they will retain the possibility of opting out of the UPC, allowing for greater strategic flexibility. The vast majority of holders traditionally validated their European patents in 4 or 5 countries, which usually included the United Kingdom and Spain. In many of these cases, interest in UP-participating countries could be limited to three or fewer. This may explain why the proportion of unitary patents remains low. UPC: Better acceptance than the unitary patent according to opt-out data relative to the total number of alive European patents. The explanation could derive from a lack of knowledge about the new European patent system and the opt-out possibility or from the unknown costs of a process in the new court.

At Herrero&Asociados, H&A, we are fully available to our clients and associates to advise them on the most effective way to protect their inventions in Europe from an economic, strategic, and legal perspective. We are the Spanish leading firm in the filing of European patents and we have filed 13% of all UP of Spanish origin.

Author:

Íñigo Pradera
Head of the Chem/Pharma and Biotech department.
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