Pros and Cons of the Unity Patent and the UPC

PROS

·     National validations (and, therefore, patent translations) are not required. This entails:

a.       easier administrative management

b.       a single concession fee, which is lower than the sum of the fees that would be due for nationalisation in all the contracting States

c.       only one translation into another language and only for a transitional period (even if for the entire patent, not just the claims). Moreover, this translation has no legal value, so it may not even be particularly accurate. This leaves room for cheaper machine translations

·     A single infringement action will be used to enforce the patent against the same infringer in all contracting Member States.

CONS

·     Costs are higher than those due for validation in 4/5 States. If a company is interested in fewer states, then single national validations are more cost-effective.

·     The territory covered by the patent cannot be limited in time: it is not possible to decide to abandon the patent in some States (with a relative reduction in maintenance costs).

·     Infringement actions relating to a single State are much more expensive than acting before national courts

·     A single revocation action will be used to get the revocation of the patent in all contracting Member States.

·     There are no case law precedents and the system is also new for judges, hence there is greater uncertainty about the progress and outcome of proceedings.

·     Unlike in the Italian legal system, “stable” precautionary injunctions are not envisaged. Likewise, the retroversion of profits in judgments for compensation for damages is also not envisaged.

·     Unlike in the Italian legal system, protection is not expressly provided for pending patent applications, which is particularly relevant when considering that it takes years to obtain a European Patent.

There may be grounds for arguing that applications should also be protected under the UPC system, including for example the fact that:

a.       the European Patent Convention provides that the patent application provisionally grants the same rights as the granted patent, hence it should also confer the same right to enforce it;

b.       the UPC Agreement states that the jurisdiction of the Court also covers patent applications (Section 3) and provides for the possibility of opting-out of this jurisdiction also for applications (Section 83).

However, as mentioned, the possibility to enforce patent applications is not expressly provided for. It is only provided that the UPC can decide on applications for the indemnity due for the infringement of patent applications (Section 32f of the Agreement and Section 125 RoP). To date, therefore, it can only be hoped that such enforceability will be conferred by way of judicial interpretation.

Possible ways to mitigate the “cons”:

i) obtaining a national patent alongside the unitary one, which will remain subject to the national court (in the states where it will be allowed, including Italy as per our preceding post here)

ii) obtaining a divisional European patent and opt it out of the UPC jurisdiction (during the transitional period), in order to have a double channel of protection.

[Last updated: July 2023]