Last time, we examined the Pros and Cons of both the UP and UPC. In this edition, we provide some guidance as to the considerations patentees and applicants can build into their own patenting strategy when it comes to the UP and UPC as well as sharing the conclusions we have drawn from the all the information which has been published.
With the pros and cons of the UP and UPC in mind, as just described, the strategy to follow for a proprietor may need to be studied on a case-by-case basis, balancing different factors.
One aspect to consider is cost. As stated earlier, the cost of a UP is more or less estimated to be equivalent to the cost of validating in 4 countries with the classical route. However, it is important to bear in mind that, even if unitary effect is requested, it will still be necessary to validate nationally in some countries, such as Spain and UK, should the proprietor have an interest in these countries. Another consideration with respect to cost is the patent life, since the financial advantage afforded by the single renewal fee of the UP decreases after the first 10 years, when the cost of the renewal fee increases sharply.
An additional cost is paying for one translation, which is a requirement when requesting the UP.
And lastly, as discussed earlier, it will not be possible to abandon renewals in certain countries if they are part of the 17 countries that have ratified the UP.
A second aspect to consider are the risks involved. First and foremost is the risk for central revocation. An associated consideration is if licensing agreements are expected to be entered. If one classical European patent is invalidated in one country, it is still possible to collect licensing fees in the other countries under the classical route, whereas if a UP is invalidated, this will no longer be possible.
The second risk in a minority of cases is the risk for national prior rights described before. Prior rights under the classical route are a national threat and under the UP they are a central threat.
So what can we conclude?
A general strategy may be to consider the criticality of the patent in question and the costs that may be manageable by the patentee. Proprietors that would typically validate in at least 4 of the 17 countries members of the new system, or that see a major advantage in having a wide protection across Europe, and that have no particular reason to opt out of the UPC, may find the UP route to be most beneficial. If the patent is particularly valuable and costs are not a major factor, it may be advisable to choose the classical route and opt out of the UPC.
Applicants have one month of the date of publication of the mention of the grant in the European Patent Bulletin to make their decision on whether to go the UP route or the classical route. If patentees decide to opt out of the UPC, although it is possible to still do it after grant, it is advisable to do it before grant to avoid the risk of a revocation action being immediately filed at the UPC after grant, which would then irreversibly tie the granted patent to the jurisdiction of the UPC. A discussion on which strategy to follow should be started as soon as the intention to grant decision arrives, if not earlier.
We hope you found this series of articles useful. At Rouse, our team of attorneys, European patent attorneys and European patent litigators (UPC representatives) will be happy to provide advice to applicants and patentees on any questions that may arise on the UP and UPC. In the first instance, please contact either of the authors, Torbjörn Presland and Isabel Cantallops Fiol or to find out more about our patent services, please click here.
