Inaugural months of the UP/UPC: analysis of early activity
The possibility to validate a European Patent with unitary effect became a reality on June 1, 2023. Of the 391 contracting states to the European Patent Convention, a block of 172 contracting states can be validated with one action by requesting a patent with unitary effect (Unitary Patent, UP), reducing translation and renewal fee costs for the patentee. Launched at the same time, the Unified Patent Court (UPC) allows parties to litigate (invalidate or enforce) a granted patent, with a single decision effective in the block of 17 contracting states.
Unitary patent filings
Around four months on from the launch, statistics from the European Patent Office (EPO) reveals a higher than expected uptake for the UP. At the time of writing, the total number of requests for unitary effect is 11 627, of which 10 976 (94.4%) have been successfully registered. The monthly figures from June to September 2023 show a steady rate of UP requests (see graph). We know from data of June to August 2023 that the total number of requests was over 8000 compared with a total of approximately 35 000 grants; thus around 23% of patentees took the UP option in the first 3 months.
Of the requests for UP, English accounts by far as the most dominant procedure language (71.9% of UP requests), followed by German (21.4%) and French (6.8%). Data from the EPO’s own dashboard (link here) shows that most patentees of patents granted in English choose Spanish (28.3%) as the language of the single translation, closely followed by German (21.2%). This presumably has to do with the availability of the Spanish text for purposes of parallel validation in Spain, availability of the German text from priority applications or parallel national applications in Germany, and potentially the propensity of patentees to choose German due to the economic importance of that country within the UPC territory. The most popular technological fields for UP validation are infrastructure and mechanics (20.2%), materials and production (19.7%), and health (19.0%).
UPC opt-outs
Prior to the launch of the UPC on June 1, 2023, the sun-rise period allowed patentees to opt classically validated patents and patent applications out of the UPC system. In the weeks leading up to the end of the sunrise period, the rate of opt-out filings surged, and over four hundred thousand EP patents were opted out in total prior to the UPC start, the number further increasing to about half a million opt-outs lodged to this date.
Early verdict
While there was a peak in opt-outs prior to the start of the UPC, there are still several hundreds of thousands of legacy patents that have not been opted out and for which the UPC will thus share competence with national courts during the transitional period. The number of standalone revocation actions before the UPC is very low (central revocation actions have been lodged against 15 patents to date) – which might suggest that the risk of UPC revocation is accordingly small. High risk patents might have been already opted out, of course, meaning those remaining might be less of an invalidation target. It is clear that, for now, opposition before the EPO still remains the major avenue for revocation, with cases averaging around 3 400 per year according to the EPO’s last 5 year review.
The low quantity of pending UPC revocation actions might incentivize patentees towards UP validation for at least some of their cases, and early data suggests around a quarter of validations since June 1, 2023 used the UP – an encouraging launch. For smaller companies, the UP remains a highly cost-efficient and procedurally simpler option. Our firm remains committed to providing expert guidance that serves the best interests of our clients; with 13 qualified UPC litigators in different technological areas, we are well equipped to offer nuanced advice. If you would like more information about the unitary patent or unified patent court do not hesitate to contact one of our IP experts or reach out to us via info@dcp-ip.com.
1 EPC countries: AL, AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR, GB, GR, HR, HU, IE, IS, IT, LI, LT, LU, LV, MC, ME, MK, MT, NL, NO, PL, PT, RO, RS, SE, SI, SK, SM, TR.
2 UP countries: AT, BE, BG, DE, DK, EE, FI, FR, IT, LT, LV, LU, MT, NL, PT, SE, SI.