The Greenshoots Podcast by Appleyard Lees – episode 35 – the Unitary Patent and Unified Patent Court: a 2023 update

In this episode, Appleyard Lees patent attorneys and partners Howard Read and Kate Hickinson provide an update on the implementation of the Unitary Patent (UP) and Unified Patent Court (UPC).

Howard and Kate discuss implementation dates, the UPC’s case management system, and considerations European patent proprietors will need to make with regard to their portfolios.

Podcast transcript

Welcome to the Greenshoots Podcast by Appleyard Lees, a conversation for those who own, manage, or protect intellectual property.

Howard: Hello, I’m Howard Read, a European patent attorney and partner at Appleyard Lees, joined today by Kate Hickinson, also European patent attorney, and partner at Appleyard Lees. Today, we’re going to be talking about the Unitary Patent and the Unified Patent Court. Hello, Kate.

Kate: Thanks, Howard. We spoke recently about the Unitary Patent and the Unified Patent Court, and we’re all set to go with the start date of the 1st of April 2023. However, we now have a start date of the 1st of June 2023, with a summarised period due to start on the 1st of March 2023. As I understand it, we’ll get the dates for definite once Germany deposit their instrument of ratification. And although I haven’t heard anything more on that recently, I think that, hopefully, we’ll go ahead in February. But there was this delay of two months, and this was to do with the fact that we had to prepare for a strong authentication that is required to access the case management system or the CMS. I know you’ve spent quite a lot of time looking at this, haven’t you, Howard.

Howard: Currently, users of the case management system for the UPC can access this via a beta system. And the UPC wanted the users to have more opportunity to make use of the beta system, and particularly to test and trial the strong authentication that is required for all users of the case management system. This is why we have this postponed start date by some two months to allow that to further test and trial.

Kate: And my understanding is that we need individual certificates for this new system rather than one that’s across the whole organization. Is that correct? 

Howard: That’s entirely correct, Kate. So the authentication relates to a particular user, either a lawyer who is qualified to act before a court of a contracting state of the UPC, or a European patent attorney who is appropriately qualified. Furthermore, administrative staff can also make use of the case management system, but in each case, individual authentication is required, and this is new to most users of the European patent system.

Kate: So I think you’ve managed to get your certificate now, haven’t you?

Howard: Indeed. There are some providers of appropriate certificates in Europe. The UPC has, relatively recently, published a list of providers who appear to meet the requirements, and this has been further reinforced, coming through, for example, EPI and SEPA in the UK.

Kate: So hopefully, we’ll now all be ready to go from the 1st of March.

Howard: And that is what we’re very much expecting. So we, as other patent attorney firms, and indeed patentees are trialling the system to ensure fitness for starting at the sunrise period on the 1st of March 2023.

Kate: It was quite a relief that we got that two-month delay.

Howard: In some respects, yes, because it allows for the testing and trial. On the other hand, actions are being prepared in order to meet the earlier deadline, and so, there was a disappointment also regarding the further apparent postponement of the start of the UPC.

Kate: But although we’ve had that postponement, [00:04:00] we do have some actions that we can take as of the 1st of January this year, don’t we? And these actions that have been put in place by the EPO.

Howard: We have indeed, Kate, yes. So here very much the EPO, the European Patent Office has held to their previously agreed plan, which allows for delaying grant of European patents and early request for unitary patents. The EPO had already planned earlier in November that this would be available from the 1st of January 2023. With the postponement of the sunrise period as a result of the postponement of the opening of the UPC, the EPO has kept to that date of 1st of January 2023, such that we can simply delay a grant of a European patent for longer and we can request the unitary patent effectively earlier.

Kate: So in terms of delaying grant, that requires the filing of a EPO form, I think a Form 2025, and we have to have had a Rule 713 communication issued in order to be able to delay grant, don’t we? And also, the form has to be filed before we approve the text. But from what I’ve read, the EPO will accept that if the response to the 713 is filed on the same day as the request to delay grant, but it’s really important to remember that we do still have to respond to the 713 communication in time.

Howard: Yes, Kate. And one thing I will highlight is that the requested delay grant is only available up and to the start of the UPC on the 1st of June 2023 as currently planned. That is, we can only request a delay of grant during this [00:06:00] period of some five months. I’ll also add that by delaying grant, you do not necessarily have to request also a Unitary Patent. There are other reasons why applicants may choose to delay grant of the European patent, although commonly it is at this stage to be able to request a Unitary Patent, or, at least, to explore further whether or not they wish to request a Unitary Patent.

Kate: So I’ve been instructed by one client to file an opt-out on a pending European application. I understand that’s because they’re concerned that an opt-out is only effective once it’s entered onto the UPC register, and they want to make sure that there’s no time where the patent falls under the jurisdiction of the UPC, and they want to achieve that by opting out before grant. When I’ve thought about this, I’ve thought that perhaps that’s something that we might look at for our clients when we’ve received a rule 713 communication. Have you given any thought to that, Howard?

Howard: Yes, Kate. So certainly, the UPC agreement allows for opting out of European patent applications, and this would then, at least, suggest that the applicant does not intend to request a Unitary Patent later on, though they can, of course, always opt out. Filing the request to opt out early is conservative, and, generally, is not necessary to do until no earlier than the response to the 713, if we’re thinking about, say, best controlling costs.

Kate: When I’ve thought about it, I wondered whether it’s something that might be most important towards the end [00:08:00] of the transition period, although, of course, that’s some way off. Maybe people will want to opt out their applications, if they’re going to grant after the end of the transition period. I assume that that means that they would then remain opted out, but I’m not 100% sure on that.

Howard: It’s probably a useful reminder that you can opt out once, and you can withdraw the request for opt out once. And this is irrespective of any succession of title. So suppose, for example, your patent is subsequently assigned, having after the request for opt-out has been withdrawn, then the assignee cannot subsequently again request an opt out. So there are all these considerations to be made. If a client instructs us to request an opt-out for a granted European patent or even indeed a pending European patent application, we will ask for a mandate, effectively a power of attorney for want of a better term, which will be wet signed by the true proprietor of that European patent or European patent application. Though this will only be necessary or probably necessary during the sunrise period, after which mandates will not be required where the opt-outs are filed by appropriately qualified European patent attorneys such as Kate and myself.

Kate: So in some cases, our clients [00:10:00] are quite large companies that can have quite complicated company structures. Do you expect that we may get questions as to who can sign the mandates, Howard?

Howard: I expect very much, yes, if it is not clear that the person signing is authorized to sign on behalf of the true proprietor, then further evidence may be required. Another complicating factor in all of this may be if there has been assignment or transfer of the European patent or European patent applications running up to the request to opt out since the patent was granted or patent application filed, for example, so, record of transfers may also be required before the opt-out can be requested.

Kate: So another action that we’ve been taking recently is looking at who can register as a representative before the UPC. We can’t do this yet, but we’ll be able to do it via the CMS once the sunrise period begins. So EPAs that are entitled to act before the EPO, and that have appropriate qualifications such as the European Litigation Certificate will be able to act. So as I understand it, there’s a one-year transition period in which we can request to be registered as a representative before the UPC, and during that time, it might be that other qualifications may be considered to count towards this.

Howard: Yes, Kate, the UPC has issued a list of those courses that will qualify a European patent attorney to be entitled to represent before the UPC. This includes many qualifications [00:12:00] taken by, for example, UK/European patent attorneys, provided that they have successfully completed those courses prior to, I think it’s the 31st of December 2020 – this, of course, being a consequence of Brexit. So many UK/European patent attorneys will be effectively grandfathered in via this provision.

Kate: Yeah, so I think that lots of applicants will make use of the opportunity to delay grant, because it gives them, at least, the opportunity to delay making a decision about whether they would like to request a Unitary Patent, and just allows more time for making decisions around this new system. As I understand it, the EPO has advised that about a 1000 request to delay grant have been filed already in January this year. So it does seem like people are using it, and it’s certainly making life easier, because before we had this opportunity, we were coming up with ways to not approve the text and delay grant and, you know, through various other routes. So I think this is a helpful step forward.

Howard: There are a couple of points that we should, of course, remember when delaying grant. One is that renewal fees continue to be payable before the EPO, so that still must be done during this period. And furthermore, of course, we’re delaying actually the grant, and that is when the patent becomes enforced and when action could be taken in respect to that pattern, for example, action with respect to alleged infringement. So whilst that is not very common, these are things that need to be balanced when thinking about delaying grant.

Kate: So the other new action that we can take from the 1st of January is to file an early request for Unitary Patent, and again, [00:14:00] this is only available when a rule 713 communication has issued, and it’s only available until the UP system begins.

Howard: Exactly Kate, this is really for applicants who have decided that the Unitary Patent, the UP is for them. In most cases, the applicants will be requesting a Unitary Patent together with validations in some of those countries which are not contracting states of the UP and UPC, such as the UK, Spain or Poland.

Kate: I’ve had a couple of clients ask about this new option, and I felt that it was important to highlight the costs because if you’re filing a request for a Unitary Patent, then there are translation requirements, of course. So if the pattern specification is in English, which, for most of our clients it is, then we have to file a translation into another language of a member state; and this is a cost that clients might not be used to, so they might get the headline news that you don’t have to pay a fee for requesting a Unitary Patent, but obviously, there are other associated costs with that.

Howard: As we know, currently, for an EP patent, there is the requirements to file the translations of the claims into the other two languages, other two official languages of the EPO, so typically, French and German, where the language of the proceedings is English. In contrast, for a Unitary Patent, we’re required to file a complete translation of the specification of the granted patent into a language other than the language of the proceedings. So if the language of the proceedings is English, [00:16:00] then the translation can be into any official language of an EU member state; while if the language of the proceedings was French or German, the translation must be into English. This is quite a significant change from what is done currently, and may add additional cost. I will note that the requirement to file translations is only during a transitional period of six years, though this may be extended by up to a further six years to a maximum of 12 years. We also know actually that the translations are really being used to train the AI translation that the EPO and UPC will use, rather than to provide for any legal basis.

Kate: Yeah, there’s been quite a lot of discussion, hasn’t there, about whether you can use a machine translation, but I think the conclusion at the moment is that that’s not the best course of action, although it would, of course, be a lot cheaper for applicants.

Howard: As far as we know, there’s no sanction if a machine translation is filed. However, our recommendation is that a human translation is filed.

Kate: We’ve been quite busy with this over the last year or so, and now we have what looks to be a definite start date. We’ve got more actions that we’re taking, and trying to educate our clients and get decisions. So any patentees and applicants who have applied for European patent applications should have heard from their representatives and need to be considering the new systems and whether they need to take action now. And at Appleyard Lees, we have a team of people who are looking at the UP and the UPC, if anybody would like to get in touch with their questions. [00:18:00]

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About The Greenshoots Podcast

The Greenshoots Podcast by Appleyard Lees is a conversation about intellectual property, focused on what matters most to innovators, inventors and brand owners, right now. In each episode, intellectual property specialists discuss the essential issues facing those who create, or protect, IP.


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