Out-Law News 3 min. read

Mixed views expressed about 'double patenting' through new unitary patent framework

Businesses, trade groups and intellectual property (IP) specialists are split on whether UK rules should allow inventors to obtain both a UK national patent and a new unitary patent for the same invention, according to the UK Intellectual Property Office (IPO).

The views on 'double patenting' were set out by the IPO in a document summarising the responses (8-page / 356KB PDF) it received to a consultation held in relation to the UK implementation of the Unified Patent Court (UPC) Agreement and regulations establishing a new unitary patent. The consultation sought views on proposed new legislation to make changes to UK patent law. BT, IBM and Teva were among the respondents, which also included TechUK, the Intellectual Property Lawyers' Association and the British Generic Manufacturers Association.

"Those in favour of double patenting suggested that this would mean that take-up of unitary patents would be higher," according to the IPO's report. "Others were supportive of allowing double patenting because they felt it would provide a safety net in case a unitary patent were revoked because of procedural issues."

"A third group of respondents felt being able to hold a national patent in parallel with a unitary patent might offer companies the option of using a national route to litigate which may be cheaper than solely relying on the unitary patent and UPC litigation. Also, those considering long-term patenting strategies noted that double patenting would permit them to allow a unitary patent to lapse whilst still retaining the protection of a national patent," it said.

"Many of those opposed to introducing double patenting for unitary patents did so because they considered that allowing double patenting would increase litigation, with multiple actions being taken for the same invention. Amongst the problems that this could cause, some mentioned the risk of 'double recovery' (recovering damages more than once), of getting different outcomes, and having to rerun an already-successful argument in a different court. There were comments that double patenting could create additional complexity for third parties by affecting what they are entitled to do based on what patents they are licensed for," the report said.

Businesses and other applicants will be able to obtain unitary patents for their inventions once new European regulations giving recognition to their status are implemented and there has been ratification of the UPC Agreement by at least 13 EU countries, where that number includes the UK, France and Germany.

Under the new system, businesses will be able to make a single application for a unitary patent which, once granted by the European Patent Office, will provide patent protection extended into every EU country participating in the new unitary patent system. Importantly, any decisions on disputes relating to infringement or validity of a unitary patent will apply across the whole territory.

Under the current process, EU-wide protection is only available to those who validate a patent registered with the European Patent Office in each individual EU country, to create a 'bundle' of European rights.  In a bid to reduce the costs associated with obtaining and maintaining European patents, the new unitary patent framework is being developed.  A patentee will only need to enforce their patent in one court, rather than in multiple national courts, with potentially significant further cost savings.  

The new unitary patent system will be established alongside a new Unified Patent Court (UPC)  to enable disputes over the validity or alleged infringement of unitary patents to be resolved. The UPC will eventually have jurisdiction to hear disputes on European bundle patents too, although during a transitional period of at least seven years actions on European bundle patents may still be brought before national courts. An owner of a European bundle patent will be able to opt out of the UPC on a patent by patent basis.

Expert on the unitary patent reforms Victoria Bentley of Pinsent Masons, the law firm behind Out-Law.com, said: "The unitary patent and Unified Patent Court Agreement represent the most significant changes for UK patent law since the 1970s. The IPO's recent consultation, to gather views from businesses, legal practices and industry organisations, is an important step in the process, to ensure proper implementation of the UPC and the unitary patent in the UK. There remains uncertainty around certain aspects of the UPC Agreement and its interaction with national law, and it is vital that these issues are ironed out at this stage."

"Not surprisingly, the consultation found uncertainty among many of the respondents as to the impact the new court may have on UK businesses whilst information such as the makeup of the judiciary is unknown," Bentley said. "We are also waiting for information on the level at which renewal fees for the unitary patent, and opt-out fees, will be set. As demonstrated in the qualitative research commissioned by the IPO and published last year (64-page / 352KB PDF), cost is a key issue for potential users of the UPC and unitary patent, and likely to be a key factor in whether to opt out of UPC jurisdiction."

The government is expected to issue a response to the views expressed during the consultation before draft legislation giving effect to the new unitary patent and UPC system in the UK is laid before parliament.

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