I. The Risk of “One Strike and You’re Out” in Invalidity Disputes with the Unified Patent
On the surface, the Unified Patent seems to provide broader and more convenient protection, with lower costs for protection. However, once a patent granted through the Unified Patent route is invalidated, the patent loses its effectiveness across all the contracting states. While applicants enjoy the convenience, they also bear the risk of their patents being “struck down” by a competitor with a single action.
Patents granted through the Unified Patent system are subject to the exclusive jurisdiction of the Unified Patent Court (UPC) for any disputes and litigation. The decisions made by the UPC apply to all UPCA (Agreement on a Unified Patent Court) member countries. For the prevailing party, this system saves on litigation costs and improves efficiency. However, for the losing party, especially if the patent is invalidated, the patent will be considered invalid across all UPCA member states, leaving the patent holder with no room for recourse.
II. The Coexistence of the Unified Patent System with the Traditional European Patent System Increases the Complexity of Filing and Maintenance Strategies
(A) Regarding Patent Waiver
With the Unified Patent, it is not possible to selectively abandon patent rights in a specific country; patents can only be terminated in full. This design removes flexibility for patent holders and increases the costs of patent maintenance and management.
Typically, companies may choose to abandon granted patents due to high maintenance costs, outdated technology, lack of market demand, or even commercial strategic considerations. In the traditional European patent application process, patent holders could selectively refrain from paying annual fees in specific countries to abandon the patents in those countries. However, under the Unified Patent system, patent holders are constrained by the system and no longer have the right to selectively abandon patents. Instead, they must choose between maintaining or abandoning the patent in its entirety, which not only increases maintenance costs but also limits the patent holder’s strategy.
(B) The Geographic Scope of Protection of the Unified Patent
According to Article 18(2) of Regulation (EU) No 1257/2012, the territorial scope of a specific Unified Patent depends on the UPCA (Agreement on a Unified Patent Court) member states as of the patent’s registration date. Even if the membership of the UPCA expands over time, the geographical scope of protection for that specific patent will not extend to countries that join the UPCA later.
Currently, 25 countries are participating in the Unified Patent system, though some countries have yet to officially approve the UPCA. As of June 1, 2023, 17 countries had approved joining the UPCA. As more countries approve the UPCA, the geographical coverage of the Unified Patent will also expand. However, since the territorial scope of protection for a specific patent is tied only to the UPCA member states at the time of registration, applicants may find different territorial coverage for patents registered at different times, which could impact patent filing strategies and subsequent maintenance.
For example, an applicant may wish to register Patent A as a Unified Patent and also seek protection in countries that have not yet approved the UPCA (e.g., Ireland). In this case, the applicant would need to separately file in Ireland through the traditional European Patent route, providing translated documents as required by the Irish Patent Office, and pay the subsequent maintenance fees as required by the Irish Patent Office.
However, once Ireland approves the UPCA, if the applicant files Patent B as a Unified Patent, they would no longer need to file through the traditional European Patent route for Ireland and could directly enjoy the benefits of the Unified Patent system. Clearly, during the process of maintaining Patent A and Patent B, the applicant will incur more management costs and apply different maintenance strategies.
Additionally, if a member country decides to withdraw from the UPCA in the future, the impact on European patent matters would be as significant as the Brexit process, and it could cause unpredictable challenges for Unified Patent holders in managing and maintaining their patents.
Conclusion
For applicants interested in and needing to make patent filings in Europe, it is important to understand how to obtain a European Unified Patent, the associated costs, protection methods, and subsequent judicial remedies. Keeping up with the progress of European patent integration is crucial for better safeguarding one’s rights.
This article solely reflects the author’s personal views and should not be regarded as formal legal advice or conclusions issued by BZW Law Firm or its lawyers. Should you wish to reproduce or quote any content from this article, please contact us via email. If you are interested in further exchanging views or discussing this topic, you are welcome to leave a message.
