The Unitary Patent is here! But should you use it?

From today, 1st June 2023, it is possible to get a Unitary Patent (UP) following grant of a European Patent by the European Patent Office (EPO). So what is it? And should you use it?

The UP is a European patent which has unitary effect in 17 European Patent Convention (EPC) states: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. It is simple to obtain following grant of a European patent by filing a Request for Unitary Effect at the EPO.

Let’s look at some of the pros and cons of going the UP route when your European patent reaches grant. The biggest pro is that you have a single patent with the same protection in all 17 countries, with no need for any translations. The next is that a single annual renewal fee covers all 17 countries. But these two pros also lead to two potential cons. Firstly, the renewal fee has been set to correspond to the combined renewal fees due in the four countries where European patents were most often validated in 2015 (DE, FR, GB and NL), so if you typically only validate in 2 or 3 countries, the UP will be more expensive. And secondly, because it is a single patent, you can’t choose to drop any of the countries that it covers, or reduce the renewal fee.

The next big pro is that alongside the UP we have the new Unified Patents Court (UPC), which is the forum for taking infringement action against a UP. This means that you can sue for patent infringement in all 17 countries at once at this new central court. But the UPC is also the source of the biggest downside of the UP for patent owners – the validity of a UP can be attacked through the UPC, meaning that patent coverage in all 17 countries can be lost through a single (successful) validity attack. But, realistically, for the majority of SME patent owners the risk of a central validity attack is low, as is the likelihood that you will want to take infringement action.

And what about the rest of the EPC member states, including the UK, that are not currently participating in the UP? For these (non-UP) EPC states we will continue to validate European patents in the countries in which you want it to take effect – following the “classic” procedure, as we have always done, and annual renewal fees will continue to need to be paid for each country.

And what if you don’t want a UP? Well, you’ll be relieved to know that you don’t have to opt for a UP in the countries that it covers – a European patent can still be validated in the “classic” way in each of the countries participating in the UP.

One thing to note however, for classically validated European patents in both non-UP and UP states, is that the UPC is also now the forum for taking infringement action and validity action against all classically validated European patents, including those granted before today. It is possible to opt-out of the UPC’s jurisdiction, and many patent owners (particularly those with high value patents which might be at high risk of central validity attack) are choosing to do this. The question to consider, as noted above, is what the risk is to each patent that you own of a central validity attack by a third party competitor is, and what is the likelihood that you will want to take infringement action.

You can find more details about the UP and the UPC on the EPO website here: EPO – Unitary Patent

If you would like to discuss the implications of the UP and the UPC, and whether you should opt for the UP or opt-out of the UPC, our patent attorneys can advise and take the appropriate action on your behalf. Get in touch here or email us at hello@two-ip.com

Certainty lost – the EU’s plan for Standard Essential Patent adjudication

On the 1st June 2023, the Unified Patent Court (UPC) will come into force. Created by the Agreement on a Unified Patent Court (UPCA) which was signed in 2013, it is the culmination of decades of political efforts to create a common patent court for participation by members states of the European Union. Evidently affected by Brexit, and the resultant inability of the UK to participate, it still strives to provide a streamlined and efficient mechanism for post-grant actions involving European patents. When it opens its doors in June it will initially hear cases involving infringement and revocation actions, and a single court ruling will be directly applicable in the EU member states which have ratified the agreement- currently 17 member states.

The focus of this Court is patents – and only patents. It will have both legally and technically qualified judges. They will be trained centrally to ensure consistency in judgement. They will sit in panels of three at the Central Courts of First Instance, or five in the Court of Appeal. Currently there are 34 legally appointed judges and 51 technically appointed judges. The structure appears well thought out and rationalised. It will base its decisions on EU law, the European Patent Convention, the UPCA, other international agreements applicable to patents, and national law.

All in all, the UPC is to be welcomed as an adjudicating body in Europe for patent matters in Europe. Why then, has the European Union recently announced that it is not the UPC but the EU Intellectual Property Office (EU IPO) that will maintain a register of Standard Essential Patents (SEPs) and oversee royalty rate settings for those patents. The EU IPO has proven to be a very effective organisation for delivery of unitary trade mark and design rights across Europe – but has no experience of patents.

The UPC, an organisation which has been populated with technical experts in patent law and the underlying technical subject matter of these patents would appear to have been a more logical choice for such an adjudication body, if such a body was even needed. The question as to why it is being side tracked to allow the EU IPO, which has no practical expertise in this specialised area, to take control needs to be asked. It could well be that the Commission have considered that the UPC would be conflicted by adjudicating on royalties at the same time as having a primary purpose to assess infringement of potentially the same patents. It could equally well be that it was simply not considered on the basis of a lack of understanding as to what the EU IPO currently do. The lack of explanation as to why the EU IPO is being selected, or even the plan for how it will operate in parallel with the UPC, the EPO, and the CJEU on these matters is not clear. With absent clarity of purpose, this plan can only create uncertainty – the exact opposite of what patent right holders thought they were getting in 2023 with the birth of the UPC.

Two IP’s patent attorneys have expertise in drafting and prosecuting telecommunications related patents, including standard essential patents. Get in touch here if you require assistance in this technology

Patent grants up 10% at IP5 offices in 2021

Patent activity is continuing to increase at the leading IP offices around the world, including the European Patent Office (EPO). How can you ensure that your patent attorney is still doing their best work?

Late last year we reported how both the UK IPO Innovation and Growth Report, and the World Intellectual Property Office (WIPO) Global Innovation Index reflected increased levels of innovation across world economies. This trend is reaffirmed by the recently published IP5 Statistics Report 2021, from the IP5 group of patent offices (EPO, Japan Patent Office, Korean Patent Office, China Patent Office and US Patent and Trade Mark Office). The full report is available from the IP5 website, and also from the EPO.

The report is significant in that it provides a consolidated view of patenting activity across the five largest IP offices. In 2021, 1.5 million patents were granted, an increase of 10% on the previous year. 2.9 Million patent applications were filed- with both the European Patents Office and the Chinese Patent Office leading the way with 5% and 6% growth respectively. It is evident from global filing analytics that Europe represents a key market for patent owners, some 31% of granted patents are in Europe:

As patent attorneys, this is no surprise – the challenge continues to be how to balance the increased levels of work with ensuring that clients receive the highest quality service. That is one of the challenges that we here at Two IP have addressed. By removing the traditional management responsibilities and billing targets, we give our attorneys all the time and space they need to do their best work, for a select group of clients, while ensuring that clients get excellent value for money and our attorneys are fairly rewarded for their expertise and hard work.

If this sounds like the client/attorney relationship you would value, then you can discuss your requirements with our expert patent and trade mark attorneys at hello@two-ip.com

Information on the unitary patent and the benefits for UK businesses.

The European Patent system is about to undergo a significant change, introducing the “Unitary Patent” and a new “Unified Patents Court”. 

This short video provides more information on the unitary patent and how it will provide time and cost benefits to UK businesses. 

A Unitary Patent is a European patent with unitary effect in a sub-set of the current European Patent Convention member states. A Unitary Patent provides uniform protection and equal effect in all the UP states. It may only be limited, transferred or revoked, or lapse, in respect of all the UP states. It may be licensed in respect of the whole or part of the territories of the UP states. 

There are 17 EPC member states which are participating in the UP: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. 

The UK is not participating in the UP, so the classic European patent validation process will still be followed for the UK. 

The advantages of the UP include removal of national validation procedures and reduction of costs at EP grant, and reduced renewal fees (the UP has a single annual renewal fee for the 17 UP states – the UP renewal fee is equivalent to the total of the renewal fees in the four most popular UP states). 

A potential disadvantage of the UP is that any patent litigation for infringement or validity of a UP will be handled centrally by a new Unified Patents Court (UPC), which has exclusive jurisdiction over UPs 

The Unitary Patent (UP) is expected to come into operation on 1st June 2023.

Beware of patent and trade mark registration and renewal scams

According to reports from the UK and European Patent Offices, more and more patent and trade mark owners are receiving unsolicited and unexpected requests to pay registration and renewal fees for their IP rights.  However, on closer inspection these demands aren’t coming from official sources, they are a scam.

This type of scam is nothing new.  However, because of the continuing increase in email traffic – a trend that’s only been exacerbated by the pandemic – instances are on the rise.

How does a patent or trade mark scam work?

The scams typically generally split into two types: patent or trade mark applications; and patent and trade mark renewals. 

With a patent or trade mark application scam, the fraudster obtains a patent or trade mark owner’s details once their application becomes public. 

They then use the details to send fake demands for official application or renewal fees from authentic sounding organisations like the ‘World Bureau for Intellectual Property or ‘International Patent and Trade Mark Office’ (you can find a more complete list of the fake IP organisations that have been reported here). 

With a patent or trade mark renewal scam, they will also find the date of each renewal and use that along with the name and address details to make their demands look even more genuine.

More worryingly the invitations will often identify a PCT application by its international publication number, its publication date, the title of the invention, its international application number and its priority information to make it look even more legitimate.

The requests also often come with large red ‘WARNING’ or ‘FINAL DEMAND’ watermarks across the middle to wrong foot the recipient and create additional panic.

However, despite the fact they use official sounding names and official looking stationery, language, and details, they are being created by unscrupulous individuals deliberately attempting to mislead you.

What should you do if you receive an unsolicited demand for patent or trade mark fees?

Firstly, all correspondence relating to your patent or trade mark applications, including renewal fee reminders, will be sent by the relevant IP Office to your attorney to be dealt with and your attorney will report them to you. Any costs relating to your application or a renewal fee will appear in your attorney’s bill to you, clearly accounting for each charge. 

The only exception to this rule is if your attorney has transferred management of renewal fees on a granted patent, trade mark or registered design to a specialist renewals or annuities provider like Renewals Desk, the service Two IP use.

This means if you are in any doubt about the legitimacy of any payment request you receive, you should immediately send a copy to your attorney. 

They can then contact the relevant IP body to report it so that it can be investigated.  They will also confirm there is nothing for you to pay or to worry about.

Under no circumstances should you pay any invoice that does not come from your attorney or from the specialist annuities provider that they use – in our experience, it will be almost impossible for you to get your money back.

If you are based in the UK and want to take the matter further, you can send copies of any scam invoice that you receive to the UK Intellectual Property Office at misleadinginvoices@ipo.gov.uk, to Action Fraud, and/or to your local Trading Standards office in addition to sending a copy to your patent or trade mark attorney.

If you would like to find out more about how Two IP would manage and safeguard your IP portfolio, please email us today.