Unified Patent Court: What it means for medtech

IP firm Mewburn Ellis offers views on what the opening of a unitary patent and unified patent court could mean for medtech companies.

The idea of ​​a single patent covering multiple European countries has been around for decades and on 1 June 2023, the Unitary Patent (UP) finally came into existence with a new European court, the Unified Patent Court (UPC), which has exclusive jurisdiction Is. on new UP.

Traditionally, European patent applications are prosecuted centrally at the European Patent Office and, upon grant, the patent owner decides in which European countries to “validate” the patent. The result was a bundle of national European patents, each carrying its own annual maintenance fee and each having to be prosecuted separately in different national courts if deemed to be infringing in multiple jurisdictions.

With the introduction of UP and UPC, medtech companies can still prosecute their European patent applications centrally at the EPO as before, but upon grant you obtain a single unitary patent covering 17 EU countries (currently). can choose to do. For example including Germany, France, Italy, Netherlands). The resulting UP is a single, indivisible patent that has unitary effect in the seventeen participating countries. UP charges an annual maintenance fee that covers the maintenance costs of all seventeen countries.

Later, more countries from the European Union are expected to join the UP. Notable absences from the scope of the UP are Spain and Poland and all non-EU countries (including for example the UK, Switzerland and Norway), but these exceptions may still be covered through the traditional verification route from a European patent application.

Using the UP route is currently optional and therefore medtech companies need to consider the pros and cons before deciding whether to choose UP over a grant or to continue using the traditional verification route for bundling national European patents.

One consideration is cost. For medtech companies that typically validate their European patents in four or more EU countries that are now participating in UP, there may be cost savings to be made by opting for UP. These cost-savings are made up of potential translational cost savings on grants and ongoing cost savings due to paying only one annual maintenance fee for UP (instead of separate maintenance fees in each country). However, it should be noted that if you generally verify in many countries, but selectively reduce your security for only certain countries (especially if those countries include non-EU countries) there is a potential The cost savings will pan out. Indeed, under those circumstances, the cost of UP may exceed the cost of the traditional verification route.

Second, the idea is that if you opt for the UP, the resulting patent falls exclusively under the jurisdiction of the new Unified Patent Court. The advantage is that UP can be sued centrally i.e. where you believe infringement is occurring in several UP-participating countries, you can file a single infringement complaint in UPC instead of suing separately in multiple national courts proceedings can be initiated. The resultant award shall be enforced within the jurisdiction of U.P. This can provide significant benefits to medtech companies by making infringement proceedings easier, quicker and cheaper.

However, the flip side is that revocation proceedings can also be brought centrally in the UPC i.e. a third party can challenge the validity of your UP in the UPC and, if they are successful, all of your UP-participation would lose its patent protection in jurisdictions in one go. Hence, choosing UP is effectively like putting all your eggs in one basket. It may not be wise to medtech innovations that are of significant business value to you. In short, the benefits of pan-European enforcement must be weighed against the risk of pan-European repeal.

Another thing to keep in mind is that UPC hasn’t been tested yet. Although it is composed of experienced patent judges drawn from across the UP member states, who are expected to issue high-quality decisions, until the UPC becomes a body of case law, UPC decisions are expected to be predictable. There will inevitably be some uncertainty about

In short, we recommend that medtech companies choose UP only where:

a) Where they wish to protect their innovation in more than four jurisdictions participating in the UP and where they wish to retain the jurisdictional scope of protection for the life of the patent (or at least for a longer period). , And

b) They are not aware of anything that causes them to be concerned about the validity of their patent which may make it vulnerable to central revocation.

Given that, in our experience, validity is usually challenged on the basis of earlier disclosures of which the patentee was not aware of the grant, it may be safest not to opt for the UP and instead use the traditional verification route where the technology is protected in a patent. Especially commercially important to you.

A final point to consider is that where you have a bundle of national European patents granted before the UP/UPC came into force, the national European patents in the UP-participating states are, by default, in the jurisdiction of the new UPC Will also come , However, it is possible to take action to exclude these patents from UPC jurisdiction by filing a fairly simple form. If you have any granted European patents that are of significant commercial importance or for which you have legality concerns, you may consider excluding them from the UPC’s jurisdiction to avoid the risk of central revocation. Where an granted patent has survived EPO opposition proceedings, you may also want to consider excluding it from the UPC to avoid giving the opponent another chance to centrally attack your patent. Note that you can choose to withdraw the patent later if you decide you want to bring federal infringement proceedings.

In short, UP and UPC provide a new option for medtech companies to obtain and enforce their patents in most EU countries. This option offers the potential for cost savings and broad jurisdictional coverage, along with an easier and cheaper route to multi-jurisdictional patent enforcement. However, this needs to be weighed against the risk of central revocation.