The new year heralds a new era of European patent practice, with a Unitary Patent (UP) option for obtaining widespread protection under a single examination scheme as well as a Unified Patent Court (UPC) for resolving patent-related disputes in the European Union (EU).  For applicants interested in widespread protection across Europe, the UP will provide a cost-effective path for coverage in up to 25 Member States of the EU.  On the flip side, the UPC provides the promise of compact litigation for resolving disputes without need for separate litigation in each Member State.

Although the UPC and the UP go into effect on June 1, 2023, applicants already have the option, during a transition period which began on the first of January, to submit an early request for unitary effect for patent applications pending at the European Patent Office (EPO).  Thus, now is the time to determine whether to opt in (or, conversely, opt out) of the path to UP grant.

Before going further, it is important to raise the Brexit issue.  Unlike the EPO, which Great Britain participates in through treaty, the UPC is EU-only.  Thus, applicants should remember that if British coverage is desired, as is often the case, the GB patent process incurs a separate cost.

There are both pros and cons to requesting unitary effect for an EPO patent.  The first is cost.  For applicants with tight budgets or that commonly elect to file in only one or two EU member states (or three – or perhaps even four, depending on the country), the well-known EP filing option appears to be most cost-effective.  Conversely, for coverage in five or more participating Member States, the UP is the most budget friendly option.  Second, each applicant must weigh the benefit of widespread opportunity for enforcement with the “all or nothing” loss of EU patent coverage should litigation not go the patent owner’s way.  Third, the UPC is based on a new set of “harmonized” rules. While some fret about the lack of case law in the brand new UPC, the court will be composed of elite judges drawn from the key technical jurisdictions of Paris and Munich (as the central division of the Court of First Instance) as well as Luxembourg (for the Court of Appeal).  Their lengthy experience should guide outcomes and set a tone for the fledgling UPC system.

The professionals at Gardella Grace have forged strong relationships with some of the best European patent attorneys.  We will work closely with our European counterparts to guide each client to the best decision on whether to become one of the pioneers of the UP and UPC, based on individual circumstances.