Earlier this year, we provided an overview of the Unitary Patent (UP) and how it will affect patent owners and practitioners. Now, with the announcement that the Unified Patent Court (UPC) sunrise period is adjusted to begin March 1, 2023, IP professionals are likely wondering what they can do to prepare. To help you get ready, we created a simple checklist of five steps you can take to prepare.
Before the Unitary Patent goes live:
The UPC announced a three-month sunrise period will precede the launch of the UP and UPC. The sunrise period for the Unitary Patent is expected to begin on March 1, 2023 and end on May 31, 2023. The approaching sunrise period introduces new questions and concerns for patent professionals as they weigh their options to file applications to opt out or request a delay in grant publication for their European patents (EP).
During this three-month period, you should:
1. Consider opting out of your existing European patents from the Unified Patent Court.
Within a transitional period of seven years (possibly extended by another seven years) it is possible to opt out Eps from the UPC system, which means that the UPC will not have jurisdiction over them: the jurisdiction exclusively remains with the national courts for the opted-out Eps.
However, filing opt-out applications during the sunrise period may add an overwhelming administrative burden to already lean IP departments and law firms. Partnering with an external administrative services provider, like Clarivate™, can help you absorb the administrative workload related to the opt-out procedure of your existing European patents without overwhelming your staff.
2. Decide if you wish to request a delay in grant publication on your European patents.
Once Germany files its ratification of the new system (UPCA), European patent applicants will be able to request a delay in grant after the receipt of the intention to grant in order to keep the possibility to request the unitary effect.
After the UP and UPC go live:
As soon as this new system for obtaining patent protection is available in Europe, the UPC will have jurisdiction over infringement, invalidity and other matters for all Unitary Patents as well as for all existing ’traditional’ European patents validated in any of the 17 member states of the Unified Patent Court Agreement (UPCA).
Once the new patent system is live, you should:
3. Compare the filing and maintenance costs of your options with and without the Unitary Patent.
One of the objectives behind the creation of the Unitary Patent is to reduce filing and maintenance costs. Since the traditional validations will still be available in parallel to the Unitary patent, you may want to compare the cost of the two options in terms of filing and maintenance.
To help you with this, Clarivate created a cost comparison tool that instantly provides the total cost difference between your traditional validation option and the one including the Unitary Patent.
To get a first idea of the impact the Unitary Patent will have on your maintenance costs, the European Patent Office website provides a comparison of annual official fees for complete protection in 25 member states over 20 years. The difference is significant, but only a minor proportion of patents get this level of protection over their entire life. What’s more, maintenance costs are not limited to official fees.
Hence, below that first comparison, you will find another comparing the UP route against an average of four validated countries for both validation and maintenance cost.
Clarivate annuities clients can get a precise cost comparison on their annuities Client Service Portal. Moreover, our annuities team can help you evaluate the specific impact of choosing the Unitary Patent on your portfolio maintenance costs.
4. Incorporate the Unitary Patent in your post-grant processes.
The request for a patent with unitary effect must be introduced within one month of the publication of grant. As you prepare for the launch of the Unitary Patent, you should ask “Are my operations ready to manage this new process?”
5. Monitor UPC case law.
As the UPC is a new institution, it is key for any IP litigation strategy in Europe to understand how the UPC judges cases brought before it. IP litigation intelligence solutions, like Darts-ip™, can help you monitor case law so you can better assess risks, understand trends and make confident patent decisions.
To learn more about how you can prepare for the sunrise period, watch our recent webinar, Road to the Unitary Patent – Support services from Clarivate. Within the webinar, we provide an overview of the new patent system, review the sunrise period timeline and explain how Clarivate can help you manage the opt-out process and better understand cost comparisons for annuities.