What does the Unified Patent Court Agreement mean for your European patent rights? Questel’s experts offer practical advice on the pros and cons of the forthcoming Unitary Patent system, whether you should opt-out from the jurisdiction of the Unified Patent Court, and how our Orbit Intelligence software can help you build the right strategy for your organization.
After many years of development and deliberation, the Unitary Patent (UP) and the associated Unified Patent Court (UPC) are expected to come into force in the coming months. This new Unified Patent Court Agreement and system will have an immediate impact on your strategy for protecting your innovations in Europe and the future direction of your patent portfolio.
To assist you in this process, Questel has developed a range of dedicated Unitary Patent tools and services to support your decision-making process. In this article, we will analyze the upcoming changes and explain how Orbit Intelligence, Questel’s patent search and analytics tool, can help you to navigate them effectively.
Adopting a clear strategy will allow you to maintain the value of your portfolio with regard to the imminent arrival of the UP and UPC. Don’t delay getting started! The Questel group is on hand to provide advice and support.
Unified Patent Court Agreement: Need to know
The European patent with unitary effect (known as the Unitary Patent) is the culmination of years of European efforts to create a centralized patent-granting procedure covering the member states in the European Union (EU) that are signatories to the Unified Patent Court Agreement (also known as the UPC Agreement or UPCA). As we explain in detail in our Unitary Patent eBook, the pre-grant phase for Unitary Patents will operate in the same way as the current procedure conducted by the European Patent Office (EPO). However, after grant, the patent holder will be able to apply for “unitary effect”, thus obtaining a Unitary Patent providing uniform patent protection in those signatory EU member states.
Upon grant, therefore, the patent owner can decide on the current system of validation (leading to the creation of national rights) or request unitary effect in the territories where the unitary patent is available. The advantages of the Unitary Patent include (in brief):
- A reduction in costs compared to multiple validations and broad territorial protection;
- A simple and direct procedure with reduced translation requirements, and a single annuity fee; and,
- (In parallel, through the creation of the UPC), access to a uniform jurisdiction to facilitate the development of consistent case law and ultimately increase legal certainty.
Despite these advantages, there are also certain risks to consider when deciding whether or not to choose the UPC route. For example:
- The potential vulnerability to a central invalidity action in a single court which could lead to revocation of the European patent in all UPC states;
- The initial lack of substantive and procedural case law;
- The costs, which are likely to be higher than the equivalent costs of litigation in a single national court.
Find out more about the new European right, including the pros and cons of filing rights under the new system, by downloading our Practical Guide to the Unitary Patent or read our article ‘Getting ready for the Unified Patent Court system’.
During a transition period of seven years, potentially renewable for a further seven years, the patentee must also decide whether to opt-out from the jurisdiction of the UPC, irrespective of whether their patent has taken the classic validation or the unitary patent route. Here, the clock is starting to tick…
One of the first decisions for rights holders concerns whether to opt-out existing and pending European patent and SPC rights from the UPC system and the jurisdiction of the new court. Ideally, this decision should be taken during the Sunrise period, the three-month period prior to the new court system and unitary patent going live. By lodging opt-out applications during this period, rights holders can avoid the risk of a central invalidity action under the Unified Patent Court Agreement when the new system comes into effect.
For further information about the process for opting out of the UPC system, download our ebook Opting out from the jurisdiction of the UPC.
Should you opt-out your European rights? IP analytics can help you decide
IP analytics can provide the data and information you need to help inform your future European patenting strategy. This should include a mix of internal and external indicators:
- Internal indicators
Firstly, internal indicators can help you to decide whether to opt-out your patents by considering the profile of your company and by analyzing the purpose of your portfolio. Is your portfolio intended for partnerships, defense or, on the contrary, to attack the market?
For a portfolio that is intended to be aggressive, it may be more valuable to make the decision to “stay in”, as it will have a direct and global impact. This will be further strengthened if your ability to oppose and defend your patents is strong.
The second step in your decision-making will be to analyze the market in which you operate including its size and the territories of interest for your portfolio. In some sectors, the market may be particularly aggressive and entering it may involve higher risks. This is the case, for example, in the pharmaceutical sector, which is known to be particularly litigious. In this example, “opt-out” may be a reasonable option to avoid losing the patent in a single opposition procedure in all UPC countries simultaneously.
Determining the size of your company’s patent portfolio is also crucial to making this decision. Key questions include the status of your patent, its age, and its economic value. The latter is important because a patent with a very high economic value requires protection, rendering “opt-out” potentially more appropriate.
By analyzing these factors at company, portfolio and market level, you can craft an initial overview of each patent within the UPC system:
- External indicators
Once your initial internal evaluation has been completed, your strategy can be complemented by a more in-depth analysis using IP analytics software. For example, Questel’s global IP intelligence software Orbit Intelligence delivers rapid, focused, and comprehensive access to information essential to your decision-making.
The includes the ability to quick perform: comprehensive patent analyses, such as searches for freedom to operate and patentability; deep dives into your competitors’ portfolios; and, comprehensive market analysis with supporting graphical visualizations. In addition, Orbit Intelligence provides you with access to a very large database of patent and non-patent literature (including clinical trials, projects, and scientific documents) as well as a reliable access to the legal status of patent families worldwide and their full text translations. Data on litigation, oppositions, licensing agreements, and standards are also available and information on Unitary Patents will also be included in the tool as soon as they become available.
The key information accessible on Orbit Intelligence is available in the patent family (directly at the level of the search results), but also by using the analysis tools or by carrying out guided activities:
By accessing a patent family on Orbit Intelligence, you will have direct access to its legal status. In other words, you will be able to determine whether there is any litigation/opposition pending or the outcome of such events in the past. This information will help you to assess portfolio strength. Our tool also provides you with access to backward and forward citations as well as documents cited by the examiner (category X, A and Y) which can also help in this respect. For example, it could be interesting to “stay in” with a widely cited patent as it would be considered to be decisive for its technological field.
In addition, with Orbit Intelligence you will be able to analyze your competitors’ portfolios thanks to the analysis tools, determine their geographical distribution, and/or look at which countries are the most active in your field of expertise. As an example, if a large number of competitors are operating in your field in common territories, you will wish to exercise caution and opting-out could be considered.
Using Orbit Intelligence, you will have access to more than 45 metrics, which are scores and indicators to position your portfolio on the market and compare it with your competitors (see Figure 2 below). For instance, you will be able to directly observe the originality score of a patent, its strength, and its technical impact. By comparing all of these metrics you can evaluate a patent using multiple parameters to guide you on whether to opt-out or not.
Portfolio comparison using metrics, a very strong, original, and widely cited patent will lead to an “stay in” decision
Questel and Orbit Intelligence can further support your decision-making by providing you with as much information as possible about your patent families and those of your competitors.
Unified Patent Court Agreement next steps: Contact us for additional support
The decision whether to “opt-out” your EP rights from the jurisdiction of the Unified Patent Court Agreement and jurisdiction requires a great deal of thought. Questel and our patent search tool Orbit Intelligence cannot only provide you with the necessary IP analytics to help inform your decision-making process. We have also established a dedicated service team to help you assess the opportunities and risks of the Unified Patent Court Agreement to your European patent filing strategy and business in Europe.