Even though a year has passed, the Unitary Patent (UP) and Unified Patent Court (UPC) regime, launched on 1 June 2023, remains new and its long-term potential is unclear.
When a European patent is granted, it is now possible to convert it into a UP or into traditional patents to be validated nationally. Data published by the European Patent Office (EPO) confirms that a large number of companies are opting for UPs at patent grant stage when seeking commercial protection for their innovations in Europe. However, so far, they are probably not doing so in the volume envisaged when the UP system was first proposed in the 1970s. Of course, there has been much water under the bridge since then, and the UP system applies to just 17 of the 39 European Patent Convention member states – fewer than policymakers had hoped at the outset.
Nevertheless, about 25,000 requests for UP protection have been made to the EPO since the system was launched last year – an average of more than 2,000 per month. This is a solid number, but when considered as a proportion of total European patent grants over the same period, it represents 20%-25%. Most European patents are still being converted into traditional, nationally validated patents only.
UK companies are responsible for 4.1% of the total number of UPs granted, compared with 18.8% and 7% respectively for German and French companies. However, many more European patents are granted to German and French companies compared with UK companies, and the likelihood of UK companies opting for a UP is therefore about the same. The statistics also show that European and UK companies are more likely to opt for a UP than non-European companies, such as those in the US, China and Japan.
The fact that companies are opting for UPs at all is positive, but as yet the numbers are underwhelming. This could be for several reasons and may depend on each company’s IP strategy. Companies based in China, Japan and the US, for example, are more likely to take a ‘wait and see’ approach and stick with their current European IP strategies until they are confident that the UPC will handle UP enforcement in a fair and reliable fashion. The fact that their existing national validation strategies are likely to be cheaper (in many cases) and still working well means there is no immediate need for a change of approach.
A trends analysis of granted UPs suggests that the uptake of UPs is growing, albeit tentatively. This could accelerate or decelerate in the year ahead as we see more case law emerging from the UPC system. Early case law over the past year has focused mainly on procedural matters, but IP practitioners globally are waiting to see if this specialist court is going to deliver high-quality judgments quickly and efficiently, striking the right balance between upholding the rights of patent holders and third parties.
For non-European patentees in particular, the UPC needs to demonstrate that it is a good forum for litigation. For the most prolific global filers such as big pharma and biotech companies, which are used to seeking patent protection virtually everywhere, the UP system is both a risk and opportunity. On the one hand, it could reduce the cost of achieving pan-European patent protection, but on the other, this may not be worth having if case law undermines their trust in the UPC. For these companies, confidence in the UP and UPC regime is crucial.
While waiting for case law to develop, IP practitioners should ensure that clients are aware of all options for European patent protection. Businesses seeking patent protection for the first time will be looking for advice about whether they should patent or not, and if so, where? Without any existing preferences in terms of European filing strategies, and depending on their business plan, UP protection could be just right for them.
Phil Horler is a partner, patent attorney and UPC representative at European IP firm Withers & Rogers, London
No comments yet