Advantages and disadvantages of the UP and the UPC
Last time, the statistics published by the EPO revealed how both systems have been received. This time, we share what we consider to be the Pros and Cons of them both.
With the options on the table of a) going the classical validation route, and falling under the jurisdiction of the UPC, b) going the classical validation route and opting out of the UPC, and c) requesting a UP with mandatory UPC jurisdiction, applicants and patentees may wonder which is the most advisable option to choose.
While there may be no single answer to this question that may be the most suitable for all cases, there are a number of advantages and disadvantages of each of the UP and the UPC that may be worth considering when devising a strategy to follow.
PROS of the UP
Choosing the UP, as stated earlier, has the advantage of affording protection in 17 countries by filing a single request with the EPO and avoiding having to deal with multiple national filings, with the associated time and costs that this involves. Additionally, there is no official fee for the request.
- Only a single translation needs to be filed, instead of the several translations that have to be filed in some of the countries when choosing the classical validation route.
- A single yearly renewal fee is payable for 17 countries, with a cost that is under 5000 Euros for the total of the first 10 years.
CONS of the UP
As explained earlier, one disadvantage of the UP is the risk of central revocation for all of the 17 countries in a single decision, should the validity of the UP patent be challenged.
- The risk of national prior rights having a more extensive effect than they had before. A national prior right is a national patent application that was filed prior to the application in question and that has subsequently published. National prior rights are not considered prior art against European patents, and only come into play after a European patent is validated in the country where the national prior right exists. This has meant until now that patentees had a risk of losing their rights, partially or entirely, in the country where the prior right existed, and in that country alone. However, for a UP, a national prior right may have effect across all the countries falling under the UP system, thereby jeopardizing the patentee's rights across a larger geographical extension. To assist applicants, the EPO performs a top-up search for national prior rights before indicating its intention to grant a patent.
- Being unable to prune the rights over time, that is, the possibility of not continuing to pay for renewal fees in selected countries, if the interest in those countries changes over time, hence saving costs. For the European UP, the renewal fee is paid for the 17 countries in a single sum, and there is no longer a possibility of picking and choosing which countries to continue to pay renewal fees for.
- The UK and Spain, both important countries industrially and as consumer markets, are not part of the system, and still require a separate national validation in the classical way.
PROS of the UPC
The UPC has several advantages for patent proprietors:
- A main advantage is that the UPC may issue injunctions across several countries in one single proceeding. Moreover, the system is set up to be very quick: the decision of the UPC is to be issued within 12 months.
- For many proprietors is that all divisions allow English as a language of the proceedings.
- It opens up for an application of consistent case law across Europe.
CONS of the UPC
As stated earlier, the biggest disadvantage of the UPC is the risk that the rights of a patent may be lost in all the countries that are part of the UPC system after a single procedure.
- The cost of the court fees, which can be around 10,000-20,000 Euros for a revocation action. However, the alternative, namely bringing different actions in different countries across Europe, also comes at a cost. In any event, an aspect to be considered is that the official fees are normally only a small part of the costs of the proceedings.
- Recoverable costs from another party have a cap that has been considered by many to be too low.
- The court may, as of now, be unpredictable. Of course, this will apply to the first decisions only. However, also to be considered is that the UPC may not be more unpredictable than pursuing a case in a country with not many patent actions, and hence with little established case law.
Next time, bearing in mind what we have learned from the first year of operations, we provide some guidance as to the considerations patentees and applicants can build into their own patenting strategy when it comes to the UP and UPC as well as sharing the conclusions we have drawn from the all the information which has been published.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.