UPS v PCT: the beginning of a new era for European patents

Are you aware of the new unified European patent system? In our latest post, you can learn more about this new system that will help you with your patent applications in European territory. Remember that at M&A, we have extensive experience with #patents and are here to help you.

There's an official date! The Unitary Patent System (UPS) and the Unified Patent Court (UPC) will come into force on June 1st. The system and its supranational court promise to democratize access to the highly desirable European patent.

As indicated by the European Patent Office (EPO) —which will be the administration responsible for managing the new European patent modality— on its website, the system will allow for protection in up to 25 countries; although, so far, only 17 have effectively signed up for the new system under the rules of the European Patent Convention.

The system can be used by countries that do not sign the Unitary Patent Agreement, but only to obtain a patent in countries that do sign it. The UPS, which only works after a European patent is granted, allows for simultaneous applications in all signatory countries without the need for national validation in each, resulting in significant cost and procedure savings.

In addition, applying for a unitary patent will provide access to the Unified Patent Court, which will have central divisions in Paris and Munich, and an Appeals Court in Luxembourg. Access to the UPC aims to prevent parallel litigation by centralizing all conflicts that may arise between the holder and third parties in a single process (as long as procedural rules allow it).

The new system and its court represent considerable savings in the application, acquisition, and defense of European patents, and with it, the democratization of the patent system for players who normally find the possibility of a European patent frustrated by costs and the complexity of processes. Among these are micro, small, and medium-sized enterprises, as well as individuals, non-profit organizations, universities, and public research organizations, which will see certain economic benefits if they apply to this modality.

This system and its court offer an additional option for patent access to the European market and direct competition to the PCT system for European territory, which would require mandatory national validations in each national territory where protection is sought.

This could mean the need to modify the PCT Convention rules and the benefits it offers to the countries that subscribe to it, and it certainly poses a threat to the global usage rates of the PCT in European territory.

However, not everything is advantageous with the new system, as the applicant obtains the benefits but also the risks of unifying their application. This means that if the patent is challenged before the UPC and such challenge succeeds, the holder would lose their rights in all requested territories simultaneously. Moreover, it is estimated that the renewal fees for the unitary patent will be equivalent to the renewal value in 4-5 countries, which implies the need to assess the use of the system based on the number of countries to be accessed. Added to this is the fact that the PCT still holds preference in other important markets excluded from the UPS, such as the United States, United Kingdom, China, Japan, etc., which represent a significant portion of the global market.

Picture by  Alvaro Ibañez  made available under Creative Commons Attribution 2.0 Generic 2.0 License