7
+
protection is no longer required. Instead, a single renewal
fee for the UP will be payable annually, and failure to pay
this renewal fee will result in the loss of the patent in every
country in which it was in force.
Similarly, as the UP is a single asset it will not be possible
to transfer the patent to another owner on a country-by-
country basis. If the patent is to be transferred to another
owner, it must be transferred for all of the countries that it
covers, although it may be licensed to different parties on a
geographical basis.
What should I be thinking about now?
As the deadline for selecting a UP at the post-grant validation
stage is short (only a month from the date of grant of the
patent), you should start to consider whether your existing
European patent applications should become Unitary
Patents, or whether the traditional approach of individual
national validations is more appropriate.
If you have European patent applications that are
approaching the grant stage and you want them to become
Unitary Patents rather than bundles of individual national
validations, it may be possible to delay the grant process
until the Unitary Patent option becomes available for these
applications. Your patent attorney will be able to advise you
on the steps to take if this option is of interest.
You may also wish to consider whether your existing
European patents should be opted-out of the jurisdiction
of the UPC. By default the UPC will become a new option
for litigation for all existing European patents for both the
patentee and third parties, but this option can be removed
by opting-out at any time, provided that no action has been
commenced in the UPC (e.g. an infringement or revocation
action) in relation to the patent. In addition, there will be a
“sunrise period” starting around September 2017 in which
patent owners can opt their European patents out of the
jurisdiction of the UPC before the UPC is in operation.
Most court actions are commenced by the patent proprietor,
and the arrival of the UPC will simply increase your options
as to when and where a Court action for patent infringement
is started. The use of the opt-out will usually only become
relevant if a rival instigates proceedings on one of your
European patents, such as by filing a revocation action. If
a patent is not opted out a rival could choose to use the
UPC, and once an action is filed you will not be able to opt
the patent out of the UPC’s jurisdiction. If the patent is held
to be invalid by the UPC it will therefore be revoked for all
UP member states covered by the patent. On the flipside, if
your patent is opted out and a rival instigates an action at a
national court of their choice it will not be possible to counter
with an action at the UPC.
Accordingly, if you have European patents that are of
particular strategic importance, for example where a major
revenue stream is protected by a single European patent,
and the ability to obtain a single injunction covering multiple
countries is of lesser importance, you may wish to consider
opting those European patents out during the sunrise
period, in order to eliminate the risk that an aggressive rival
will instigate a revocation action as soon as the UPC opens
for business. Again, your patent attorney will be able to
advise you on this issue.
