Protecting innovation in Europe: Which European patent filing route is best for you?

In a recent webinar on best practices for European patents, Novagraaf’s Dr Kate McNamara joined experts from Questel to discuss the new European patenting landscape. Here, we summarise some of the key points discussed.

The way European patent (EP) applications are filed and prosecuted will not change following the introduction of the Unitary Patent and Unified Patent Court (UPC) system. However, once a patent reaches the grant stage, the proprietor will have the option to select the unitary patent protection route for those countries that have ratified the UPC Agreement once the new system goes live, instead of validating nationally in those countries. 

Validation as per the existing process will still be necessary in those countries that are not signatory to the agreement (such as Spain and Poland), have not yet ratified it (such as Greece and Ireland) or are not eligible to do so. This last group includes countries that are signatory to the European Patent Convention (EPC), but are not part of the European Union, such as Norway, Switzerland and the UK. 

In other words, there will soon be three options for patent protection in Europe: the classical validation route, the unitary patent route or a combination of unitary patent and validation for non-signatory countries. With the new system due to launch in early 2023 according to current estimates, deciding which rights to register under the UPC system will soon become a pressing concern. Where should you start?

The pros and cons of the unitary patent system

The unitary patent system offers a number of advantages and disadvantages, so weighing up the pros and cons for your organisation is a good place to start. In particular:

+ The EPO will be the one-stop-provider for all post-grant administration of unitary patents, in contrast  to the EP national validation system, so there are a number of potential efficiencies to consider. These include a simplified procedure, simplified translation regime and single set of renewal fees. The ability to enforce a single patent right across many jurisdictions in a single action before the UPC also promises to be more cost-effective.

– On the other hand, requesting unitary effect may not be cost-effective if you only want to obtain coverage in a few countries. In addition, the jurisdiction of the UPC will bring its own set of potential vulnerabilities. For example, the risk of a centralised revocation action throughout the lifetime of the unitary patent and the uncertainties associated with litigating under a new court system due to the initial lack of case law. This could result in unwelcome uncertainty in predicting costs, timescales and litigation outcomes. 

One option to mitigate some of these risks would be to consider using divisional applications or related cases. For example, unitary effect could be requested for a parent case while the related divisional application is classically validated. Another option would be to hold coexisting national and European patents, subject to compliance with double patenting provisions. 

Talking to a qualified European Patent Attorney about your existing European rights and pending applications will be a helpful first step if you’re unsure how to get started. Novagraaf has undertaken a number of patent cost and coverage comparisons for clients to help them prepare their rights for this new regime. Our dedicated team is on hand to provide advice on opting-out and recommended filing routes for your patent portfolio.

For specific guidance, speak to your Novagraaf attorney or contact us today.  For further information about the benefits and drawbacks of the unitary patents and UPC system, download our practical guide to the unitary patent or watch the recording of Questel’s webinar on the new European patenting landscape.

Dr Kate McNamara is a European Patent Attorney and a UK Chartered Patent Attorney based in Novagraaf’s Norwich office.

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