The European patent system is undergoing major changes that will impact all patent filers in Europe, including Middle East-based European patent holders, and potential patent filers from the region.
After years of legal and political hurdles, the long-awaited Unitary Patent and Unified Patent Court (UPC) should soon see the light of day (likely Q2 2023).
The Unitary Patent will be a single patent right that covers all European Patent Convention (EPC) countries who have ratified the UPC Agreement (expected to be 17 countries when the system goes live).
Countries which are currently excluded from the Unitary Patent are (1) the non-EU EPC countries: UK, Switzerland, Iceland, Norway (2) EPC countries who have not yet signed the UPC Agreement: Spain, Croatia and Poland; and (3) EPC countries who have signed but not yet ratified the UPC Agreement: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.
Benefits of the new system for Middle East patent filers include wide geographic coverage at more attractive costs, more streamlined enforcement of patents, potential for pan-European injunctions, and reduced renewal and translation costs.
Our colleague Anthony Dearden discusses the UPC in detail, the changes that the UPC will bring to the European patent system and patent strategy considerations for portfolio managers in this article. For a more in-depth discussion on the UPC please see our on-demand webinar.
The key takeaway for Middle East-based filers of European patents, is that you should consider the option of opting out of any European applications and granted patents during the three-month 'sunrise' period (early 2023) before the UPC comes into force.
European patent applications and patents which are not opted out will become part of the new UPC system by default and will be open to central revocation actions across multiple European states by third parties.
We can assist you with these considerations.
What should you be doing?
- Review your European patent portfolio
- Determine which patents should be opted out of the UPC, and which (if any) should be left in the system. This is likely to involve a multi-factorial analysis, e.g. how important is the patent? What are the lifetime costs of maintaining the patent in force?
- If interested in obtaining a Unitary Patent, consider slowing examination of a pending European application until the Unitary Patent comes into force, and/or filing a divisional application
- Review licence agreements and discuss with any co-owners the implications of not opting out
- Some agreements may need to be updated to provide control over the opt-out procedure
If you would like to discuss any of the above, please feel free to contact Tamara El-Shibib from our UAE IP team.