PONS IP, a global consulting firm specialised in industrial and intellectual property, held a virtual meeting with 128 connected users to discuss the entry into force of the Unitary Patent by the EPO and Acciona Energía, with the aim of addressing key concepts, changes and benefits that this system will offer to innovative companies with a high international vocation.
The Unitary Patent (UP) system will come into effect on 1 June 2023, thereby allowing any holder of a European Patent to obtain protection for their patent in up to 25 European Union member states through a single procedure, simplifying the proceedings and entailing savings in time and costs for validation procedures, further reinforcing legal certainty by creating a single jurisdiction.
Ana Herrera, director of Patents, Technological Development and Innovation at PONS IP, began the online meeting by welcoming the attendees and introducing the opportunities and recommendations related to this process, noting that “given the imminent entry into force of the Unitary Patent and the Unified Patent Court, it is of great importance for applicants and holders of European Patents to know the options that are available and how this new unified European system can affect them. This will make it possible for them to make strategic decisions on their patent portfolios while minimising risks”.
Next, Roberta Andreatta, Key Account Manager of the EPO (European Patent Office), took the time to provide more details about the Unitary Patent proceedings in the EPO. She explained that “the European Patent Office decided to introduce two interrelated but separate transitional measures from the procedural point of view. These measures entered into force in January 2023 and are applicable to European patent applications that have reached the final phase of the granting proceedings, thus allowing applicants to benefit from the unitary patent. They are, on the one hand, the request to delay the publication so that applicants do not lose the opportunity to request the unitary effect and, on the other, the early request for unitary effect that allows applicants to request the unitary effect before the Unitary Patent enters into force”.
Moreover, together with Ana Herrera and Roberta Andreatta, Natalia Aldaba Goñi, IP Management of Acciona Energía, joined the debate to discuss the factors to be considered in the vision of the Unitary Patent from the point of view of companies. She emphasised that “ unifying all the necessary procedures for the defence of the patent, thus viewing Europe as a unitary system, is beneficial and much more attractive to non-EU holders”.
In line with the foregoing, Roberta Andreatta pointed out that unitary protection was established “with the aim of creating a uniform and transparent system that opens up the future of Europe by facilitating communication between markets”.
From PONS IP, Ana Herrera concluded that “there is no doubt that the Unitary Patent system and the Unified Patent Court will bring about an important change and will represent a breakthrough that will benefit competition in the European economy. This will inevitably go together with working on an industrial property strategy focused on maximising protection and getting the most out of IP”..
Furthermore, at the meeting Ana Herrera shared essential advice for patent holders with regard to the actions they should take before the arrival of the Unitary Patent:
- 1. Identify the most relevant/strategic applications/patents in the portfolio to decide which ones they wish to exclude from the UPC by means of an opt-out, minimising risks.
- 2. Opt-out as soon as possible (starting 1 March 2023), since it can no longer be excluded if a third party lodges a claim with the UPC before the opt-out.
- Decide for which applications the unitary effect will be requested once the intention to grant arrives or the grant is published (taking into account the number of validations that would be undertaken using the traditional proceeding, since for four validations or less the traditional validation process would continue to compensate as far as costs are concerned).
- Potentially reach an agreement regarding the decision on the unitary effect and on the opt-out with the licensees. Review licence agreements. Is there a clause that establishes who will be responsible for making these decisions?
- Register changes of ownership as soon as possible and always before taking any action related to the UP and the opt-out, since only the owner who is in the registry can request these measures.