We are thrilled to announce Boco IP’s Chairman of the Board, European Patent Attorney Jonna Sahlin has been named on the “Top 250 Women in IP” 2023 list by Managing Intellectual Property (MIP). This publication recognizes senior female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year and Jonna is one of only three practitioners to be recognized in Finland this year.
According to MIP’s IP stars: “the practitioners recognised in the “Top 250 Women in IP” publication are selected from MIP’s IP Stars list for the year. When deciding who to select for the Top 250 Women in IP publication, their research analysts took account of all the available research information, especially data from firm questionnaire and surveys, obtained for the IP STARS rankings and Managing IP Awards programme. ”
Boco IP is one of the oldest firms in Finland to specialize in the management of intellectual property. Since 1928, Boco IP has been assisting clients with intellectual property rights. With a team of experienced professionals and a global network of partners, Boco IP provides comprehensive IP solutions tailored to the clients’ unique needs.
This achievement is a testament to our dedication, expertise, and commitment to providing exceptional services to our clients. There are only two firms in this Tier 1 2023 Trademark Prosecution category in Finland.
Our team of experienced patent and trademark attorneys has worked tirelessly to ensure that our customers receive the highest quality of legal representation in all aspects of intellectual property law. We take great pride in our ability to provide tailored solutions that meet the unique needs of each of our clients.
Managing Director Karri Leskinen commented that “Being recognized as a Tier 1 firm in this IP Star survey is a significant honor for us, and we are deeply grateful to our clients for their trust and support. We will continue to strive for excellence in everything we do and remain committed to delivering outstanding results for our clients. We want to thank our clients and devoted personnel for their continued support”.
Almost all European countries have signed the European Patent Convention (EPC). These countries are marked red in figure 1. A patent right can be obtained in any of these countries by submitting a European patent application to the EPO.
Figure 1: The EPC countries
The EPO examines European patent application according to the criteria set forth in the EPC and decides whether or not the application can be granted. However, when the EPO grants an application, the applicant does not automatically obtain a patent which covers all the red countries. Instead applicants must choose where they want to put in force the patent right which the EPO has granted. This process is called validation of the European patent (or EP validation). European patents are usually not validated in all red countries because every validation produces additional costs and annuities must be paid separately in each country.
Let’s assume that an applicant validates a granted European patent in Finland, Sweden, Great Britain, Spain, Germany, Poland, Austria and Greece. The end result is illustrated in figure 2.
Figure 2: National validation
The applicant now owns a patent right in all EPC-countries where the European patent was validated. These rights are separate national patents and are therefore marked with different colors. These patents were not under the jurisdiction of a common European patent court (no such court existed in the old system). Instead, each national patent is under the jurisdiction of the corresponding national court.
The EU has a large internal market but the protection which can be obtained from a European patent was, in the old system, fragmented under a multitude of jurisdictions. If a patent right was infringed in multiple countries, the proprietor had to undertake separate legal action in each country. Competitors also had to file separate lawsuits in each country where they wanted to challenge an existing patent right. The main objective of the UPC system is to provide an improvement to this aspect of the European patent system.
The future system (probably from 2030 onwards)
It is easiest to understand the UPC system in its final form, after the transition period has ended. Presently this means the year 2030, but it is also possible that the system enters its final stage as late as 2037 if the transition period is extended.
In its final form the system will work like this:
1. European patent applications will be examined at the EPO just as before, so the criteria by which applications are judged will not change. Furthermore, all countries shown in red in figure 1 will still participate in one form or another in the system (either as a UPC member or as a non-member). It will be possible to obtain patents in exactly the same countries as before.
2. The most important novelty is this: When the EPO grants a European patent application, the applicant can decide to put the patent in force as a unitary patent which covers all UPC-countries. The 17 countries which have to date ratified the Agreement on a Unified Patent Court are shown in blue in figure 3. Seven further countries (Cyprus, the Czech Republic, Slovakia, Greece, Hungary, Ireland and Romania) will hopefully also ratify the agreement within a few years. Unitary patents are always under the jurisdiction of the Unified Patent Court. Just a single lawsuit to the UPC is needed if a patent proprietor suspects that patent infringement is taking place in many blue countries. The decision given by the court will cover all UPC countries. Competitors can likewise file an invalidation lawsuit at the Unified Patent Court. If the Court considers the patent invalid, the patent right will be simultaneously revoked in all blue countries.
Figure 3: The countries which have ratified the UPC Agreement
3. When the EPO grants a European patent application, the applicant can also validate the patent in any country. This EP validation yields a national patent under national jurisdiction, just as it does in the present system. A single European patent application can thereby yield the patent family illustrated in figure 4: a unitary patent (blue countries, UPC jurisdiction) + validated national patents (other colors, national jurisdiction).
Figure 4: A patent family in the future system
4. There is no obligation to use the unitary patent. In other words, the applicant can still perform national validations in any countries and obtain the patent rights illustrated in figure 2. But selecting the unitary patent according to figure 4 closes the possibility of national validation in UPC countries.
Transition phase (2023 – probably 2030): changes for new granted EP-applications
Let’s now take a look at the transition phase which began in 2023. During the transition period, the system will work like this:
A. When the EPO grants a European patent application, the applicant can validate the European patent in any EPC country (the red countries in figure 1). The end result of this EP validation will then be a bundle of national patents.
Although EP validation is performed exactly like before during the transition period, the legal status of the validated patent will be different from what it used to be in the old system. All patents which are validated in UPC countries will during the transition period by default be placed under the jurisdiction of the UPC court (unless the applicant makes an UPC OPT-OUT announcement – I will say more about this below). These patents will therefore be both under the jurisdiction of a national court and under the jurisdiction of the UPC.
Figure 5 illustrates a patent family obtained by validating a granted European patent in the colored countries during the transition period. The applicant has performed national validations in exactly the same countries as in figure 2 but has not exercised the OPT-OUT. Finland, Sweden, Germany, Austria and Greece have been marked with striped colors to illustrate that these national patents are both the jurisdiction of both the UPC and the corresponding national court. The patents in Great Britain, Spain and Poland, on the other hand, are illustrated with a single color. They will not under any circumstance be under the jurisdiction of the UPC since these countries are not UPC states. Greece is here used as an example of a country which has not yet ratified the UPC agreement but may do so in the future. The status of the Greek patent will depend on Greece’s ratification status on the day when the patent was granted: if the grant occurs after Greece has ratified the UPC agreement, then figure 5 is correct. If it occurred before Greece ratified the agreement, then the Greek patent will not be under the jurisdiction of the UPC and Greece should instead be presented with a single color in figure 5.
Figure 5: Joint national and UPC jurisdiction
The proprietor of the patent family in figure 5 can file an infringement lawsuit with the Unified Patent Court if infringement takes place in any (striped) UPC-country. The decision given by the UPC will then have legal force in all striped countries. Alternatively, the owner could file separate infringement lawsuits with the national authorities in some or all of the striped countries. Correspondingly, a competitor who wants to invalidate the patent family illustrated in figure 5 can tackle this patent right in all striped UPC-countries with one UPC lawsuit, or alternatively deal with them one by one through national lawsuits. But neither the proprietor nor the competitor has any choice when it comes to Great Britain, Spain and Poland: the only way to enforce or invalidate this patent rights in non-UPC countries is to take action in national courts.
The proprietor can during the transition period remove all national patents shown in figure 5 from UPC jurisdiction by making an official OPT-OUT request. It’s possible to make the OPT-OUT request already when an application is being examined by the EPO. The OPT-OUT moves the patent family back to the status illustrated in figure 2: every national patent is only under national jurisdiction, so the proprietor and competitors can only take national legal action. Proprietors who change their mind about the OPT-OUT can return once more to the status shown in figure 5 by requesting an OPT-OUT cancellation. However, no further OPT-OUTs back to figure 2 will then be possible.
The OPT-OUT ensures that the patent proprietor will avoid situations where a competitor tries to invalidate a bundle of national patents at the Unified Patent Court. The OPT-OUT also closes the doors of the UPC for proprietors themselves, but they have the possibility of opening those doors back up by cancelling the OPT-OUT.
B. When the EPO grants a European patent application during the transition period, the applicant’s second option is to decide that the granted patent should be put in force as a unitary patent in the UPC countries. In addition to receiving the unitary patent, the applicant can also decide to validate the granted patent in non-UPC countries. The end result can then for example the patent family shown in figure 6.
Figure 6: A unitary patent and national patents
No OPT-OUTs can be made in the patent family illustrated in figure 6. It is not possible to convert the unitary patent into a bundle of national applications, and the unitary patent cannot be brought under the jurisdiction of national courts in UPC countries.
It should also be noted that a unitary patent can be obtained only through a European patent application which is granted by the EPO after the UPC began its operations in June 2023. The patent proprietor cannot convert a bundle of national patents (figure 2 or figure 5) into a unitary patent. Consequently, the applicant has to make decision A and B for every European patent application granted by the EPO.
Additionally, the transition period also brings along some changes for national patent rights that were created by EP-validation before 2023.
Transition phase: changes for European patents granted and validated before 2023
Let’s assume you own a large European patent family which was created many years ago by validating a European patent in the countries which have been colored in Figure 7. The original legal status of this family is shown in Figure 7 – each patent was under national jurisdiction.
Figure 7: A patent family under national jurisdiction
Figure 8 shows the same patent family after the UPC agreement entered into force. The status is unchanged in Great Britain, Spain, Poland and Turkey since these countries are not UPC members. But in the UPC member states of this family; Finland, Sweden, Germany, France, Austria and Italy, the start of the UPC system shifted the national patents under UPC jurisdiction, although they also still remain under national jurisdiction. These countries have therefore been marked with striped colors.
Figure 8: The same family under joint jurisdiction.
The proprietor of the patent family in figure 8 can file an infringement lawsuit with the Unified Patent Court if infringement takes place in any (striped) UPC-country. The decision given by the UPC will then have legal force in all striped countries. Alternatively, the owner could file separate infringement lawsuits with the national authorities in some or all of the striped countries. The same options are available to a competitor who wants to invalidate the patent family. As before in figure 5, neither the proprietor nor the competitor has any choice when it comes to Great Britain, Spain and Poland: only national legal actions are possible in non-UPC countries.
OPT-OUT requests can be filed also for national patents created in UPC-countries through EP validation before 2023. An OPT-OUT request moves the patent family from figure 8 back to the initial state which was illustrated in figure 7. An OPT-OUT can be useful to the patent proprietor because it forces competitors to challenge the national patens one by one if they seek to invalidate this patent family. As mentioned above, proprietors can cancel the OPT-OUT if they at some point want to file an infringement lawsuit with the UPC.
Summary
It’s important to remember that all changes discussed above apply only to European patent applications filed with the EPO and national patents which have been created from such applications through EP-validation when they were granted. The changes do not concern patents granted by national patent offices such as Finland’s PRH. A patent granted by PRH will therefore never come under the jurisdiction of the UPC, but a European patent which was granted by the EPO and then validated in Finland will be under the jurisdiction of the UPC unless the proprietor exercises the OPT-OUT.
The new system has its advantages (the unitary patent covers a broad geographical area at a relatively low price), but it is certainly not any simpler than the old system. It’s a good idea to consult a patent expert when weighing the benefits, drawbacks and costs of the unitary patent and OPT-OUT decisions.
Don’t hesitate to contact Boco IP’s patent attorneys if you have any questions about the unitary patent, the UPC or European patents. We are happy to help!
Thomas Carlsson is Boco IP’s partner and member of the board. He published the book Good Patent Applications in 2021
In the past, trademark owners have repeatedly tried to hold online marketplaces liable for trademark infringements that take place on their platforms. Earlier the matter has circled around the interpretation of the term “use”. The term is not further explained in the EU Trade Mark Regulation. Some manners of use are mentioned, but the Regulation does not contain an exhaustive list of conduct or actions to be described as trademark use. So far, the operator of a marketplace or platform has been liable for any infringement only if the trademark has been used. Previous decisions have confirmed that the mere operation of an online marketplace is not sufficient to be considered trade mark use.
Facts of the case
In a landmark decision for trademark owners, (CJEU 22.12 2022, Christian Louboutin v. Amazon, C‑148/21 and C‑184/21), the French luxury shoe designer Christian Louboutin accused Amazon of a uniform and misleading way of displaying any search results and products in trademark infringement proceedings before the courts of both Luxembourg and Brussels. The action was brought as Amazon regularly displayed advertisements for goods which infringe Louboutin’s iconic red-soled stiletto, which is registered as both an EU and Benelux trade mark.
Mr. Louboutin argued that by displaying advertisements of shoes bearing a red sole on its online stores as well as by stocking, shipping and delivering the infringing goods to the end consumers, Amazon had used his trade mark without his consent. Louboutin claimed that while Amazon was not selling the counterfeit products directly themselves, they were involved in the distribution, storage and advertising of those products as well as in presenting the infringing products on its platform in the same manner as products sold under Amazon’s own name. Both national courts decided to suspend their proceedings until the CJEU had answered their preliminary questions.
The questions referred to the CJEU were whether Amazon could be held directly liable for using the trademark, where a third-party seller places an advertisement for counterfeit products on the Amazon platform. Could such third-party trade mark infringements constitute “use” of a trademark?
In its judgement, the CJEU has finally given guidelines for assessing the liability of an online marketplace. The CJEU held that operators of online marketplaces could be held directly liable for third-party advertisements. Users could mistakenly think Amazon themselves are selling shoes on behalf of Louboutin, particularly when Amazon displays its own logo on the third-party sellers’ advertisement, and also stores and ships the shoes to their end users.
Multiple factors are listed in the decision as examples of circumstances in favour of online platform liability:
Uniform presentation of all offers by displaying platform’s own advertisements alongside those of third parties and adding the logo of the online marketplace to those advertisements.
Platform operator offers additional services to its third-party sellers (presentation of advertisements, storage and dispatch of goods).
Offering customer care services (responding to buyer enquiries, handling returns) to third-party sellers.
Labelling your own as well as third-party goods as “bestselling”, “most requested”, “most offered” without distinguishing between goods according to origin.
Practical implications of the decision
The CJEU has provided widely followed and useful guideline as to when online marketplace operators should be held liable for trademark infringement by third parties. The decision allows trademark owners to take action, not only against the original infringers, but also against those who assist in the online distribution of infringing products. Brand owners will welcome this decision in their ever-ongoing fight against counterfeit goods online. It signals a departure from the earlier approach, where the operator of an online marketplace was considered not to be “using” the infringing trademarks.
Amazon now has a responsibility to ensure that it can no longer just stand by and allow trademark infringement to take place on its own platform. Online platform providers need to consider how their marketplaces will be perceived by users and it should be evident when products are being sold directly, and when they are sold by a third party. The decision also shows the risks of allowing third-party vendors to advertise and sell (counterfeit) products via online marketplaces.
We will of course have to wait and see how the national courts will apply and interpret the decision. It is, however, likely that the decision will have clear-cut implications for Amazon’s own business. The decision should prompt also other online marketplace operators to re-design their websites and carefully consider the layout of their platform to ensure that users are able to distinguish between goods sold under the operator’s own name and those sold by third parties on the same marketplace.
Laura Roselius works as an IP Lawyer and Partner at Boco IP.
World Trademark Review (WTR 1000) rankings for 2023 have just been published and there is a lot to celebrate as Boco IP is again ranked as one of the leading trademark firms in Finland.
Boco IP’s trademark practice and IP Lawyers are recognized in the 2023 ranking with the following words: “Tapping into its international network, Boco IP can solve all intellectual property issues, no matter where in the world the problem lies. The team are super organised, efficient and professional – they are simply irreplaceable.”
“Partners Peter Åkerlund, Elina Heikkilä and Laura Roselius offer A–Z IP assistance to their loyal clients. The team have filed impressive numbers of applications this year while also negotiating favourable agreements to protect IP rights. Heikkilä is “a great communicator and efficient in reacting to possible infringements of our marks; she provides detailed legal advice on how to react, so we can make the best decisions”. While Roselius earns enthusiastic praise for being “supportive at every stage of the process. She is a pleasure to work with, as she is responsive, pragmatic and clear cut in her legal advice.”
The results once again confirm Boco IP’s position as a high-quality expert in the trademark field.
World Trademark Review WTR is an independent publication in the Intellectual Property field that researches and ranks leading trademark professionals in over 80 jurisdictions.
Boco IP’s IP trademark professionals can be reached at the following addresses:
Elina Heikkilä IP Lawyer, Partner elina.heikkila@bocoip.com +358 9 6866 8415 LinkedIn
Jerry Härkönen IP Advisor, IP Lawyer jerry.harkonen@bocoip.com +358 9 6866 8433 LinkedIn
Mari Nieminen IP Legal Trainee mari.nieminen@bocoip.com +358 9 6866 8431 LinkedIn
Laura Roselius IP Lawyer, Partner laura.roselius@bocoip.com +358 9 6866 8456 LinkedIn
Peter Åkerlund IP Lawyer, Partner peter.akerlund@bocoip.com +358 9 6866 8413 LinkedIn
Both events attracted a large number of participants, including for example, entrepreneurs, investors, professionals from the technology sector, as well as a plethora of service providers from other fields. More specifically, both events attracted over 12 000 participants from different fields. While the actual “main Slush” concentrated generally on start-up entrepreneurship and its challenges, Web3’s main focus was to bring together the world’s most ambitious entrepreneurs and aficionados working on decentralized technologies. The event featured several discussion sessions, networking events as well as workshops concentrating on the latest developments and trends in the field.
The actual main Slush is nowadays such a well-known event, especially in the start-up field, that it does not really need further introduction. Last year’s exceptional circumstances have, however, hit especially the event sector so hard that it was extremely interesting to get to see how the circumstances have affected an event of such magnitude as Slush.
Just by walking in through the main doors of the venue, all uncertainties vanished at once. While walking down the main stairs leading to the actual event area, it became immediately clear that the event was still what it used to be, and attendees were rolling in in numbers even bigger than in previous years. Masses of different color hoodies were flowing on the floors of the exhibition centre like masses of water, and the highly appraised Slush volunteers were eagerly greeting participants and answering their practical questions. All that seemed to be remaining from the pandemic and resulting endless event cancellation notices were the hygiene reminder posters and rows of hand sanitizing stations.
Slush met the expectations also this year
As an event, this year’s Slush was largely following in the footsteps of previous iterations. Speakers chosen to get on the various different stages were extremely inspiring, presentations carefully structured and well executed, and participants from all around the world represented a very wide range of expertise. The venue itself was slightly more compact than last time, but yet, the event felt in no way like a “diluted” version of the previous years. As a service provider, and thus having the main task of contacting possible new sales leads, I found to my dismay, that the number of stands directed mainly at smaller startups was somewhat smaller, and the focus had clearly been shifted more onto the matchmaking side. However, as the whole event is tailor-made for mainly start-up entrepreneurs and investors, this is quite understandable, and I did not let it affect my own networking. The new focus mainly just meant that I had to alter my strategy for conversation openings by shifting them from the vicinity of the stands next to coffee machines, events-in-event such as pitching competitions and to the joint stands/show areas of bigger companies and start up ecosystems. Despite the above, striking up conversations was as easy as previously, and entrepreneurs were glad to shed light on their inventions and activities. To my pleasant surprise, I quickly noticed that the acronym “IPR” seemed to ring a bell in more conversations than last time. It could be that this is due to just better luck with selecting people to talk with, but I strongly believe that the more plausible explanation is the IPR-marketing, informing, and other educational activities that have been done in the field, at least in Finland within the past years. Unprotected brands were still discovered to some extent, but at least in the big picture, brand protection seemed to be on a very good level and even some fresher start-ups had handled at least the basic level of protection in time and properly. Even though the focus of the majority of the start-ups seemed to fall onto the field of software, where protection of innovations through, for example patents is generally not that popular, many entrepreneurs were proudly showcasing their patent portfolios, too.
Slush, generated art and artificial intelligence art – what does it mean?
The most important part of the event from an IPR perspective was generated art and AI art, which was the hot topic especially in the Web3-spinoff event. Generated art and AI art are forms of art that are created using artificial intelligence and algorithms. These forms of art are relatively new and have only recently begun to gain popularity, but they are quickly becoming an important and exciting area of the art world.
Generated art is a type of art that is created entirely by an algorithm or an AI system. This can include various art forms, from visual art and music to literature and performance art. Generated art is often created using complex algorithms that are designed to mimic the creative process of a human artist, and the resulting art is often highly unique and unpredictable.
AI art, on the other hand, is a type of art created with the help of artificial intelligence but still involves some level of human input. This can include art that is created by AI systems that are trained on large datasets of human-generated art or art that are created by humans using AI tools and algorithms to assist in the creative process. Both generated art and AI art are fascinating because they challenge our traditional understanding of what it means to be an artist. With these forms of art, the line between human creativity and machine intelligence is blurred, and the resulting art often has unique characteristics.
As AI and algorithms continue to advance, it is likely that generated art and AI art will become even more prevalent in the art world. For anyone interested in the intersection of art and technology, these forms of art are definitely worth keeping an eye on.
Overall, Slush WEB3 is an exciting and unique event that brings together some of the most innovative and ambitious minds in the world of decentralized technology.
Even though you wouldn’t be attending Slush for the main reason of searching, for example for investors to back up your start-up or for a partner to handle your prototyping needs, you’ll definitely walk away at least richer in inspiration. Being in the middle of so many innovators and ideas, it is extremely hard not to be inspired – no matter what your own field of expertise is.
Writers of the blog are Jerry Härkönen and Mari Nieminen. Jerry works as IP Advisor and IP Lawyer and Mari as IP Legal Trainee at Boco IP.
The Unified Patent Court (UPC) will very likely start its operations in April 2023, after a sunrise period which lasts from January to April. As I explained in an earlier blog post, the court will have exclusive jurisdiction in all disputes which relate to unitary patents. Additionally, during a transition period of at least seven years, the court will have shared jurisdiction in matters relating to European patents that (a) have been validated in UPC countries and (b) have not been opted out of from UPC jurisdiction.
The current UPC countries are shown in blue in figure 1. More countries are likely to join in the coming years.
Figure 1
From April 2023, European patent applications granted by the EPO can be put in force as unitary patents which covers all the blue countries. The applicant can also validate the same European patent in any non-UPC country. A single European patent application can thereby yield the patent family illustrated in figure 2: a unitary patent (blue countries, UPC jurisdiction) + validated national patents (other colors, national jurisdiction).
Figure 2
There is no obligation to use the unitary patent. The applicant can still perform national validations in any EPC country just as before. The unitary patent is just an addition to the options that existed previously. But double patenting will be prohibited, so selecting the unitary patent according to figure 1 closes the possibility of national validation in UPC countries.
The sunrise period: Early request for unitary effect or postponement of grant
The request for a unitary patent must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin. Starting in January, extra measures may be used if your European patent application has recently (September 2022 – November 2022) received a Rule 71(3) communication from the EPO and if you want to put it in force as a unitary patent, or at least consider this possibility:
If you already know you want a unitary patent, you can file an early request for unitary effect before the Rule 71(3) response deadline expires. The patent will be put in force as a unitary patent when the UPC system becomes operational in April 2024. You might even become the proud owner of the first ever unitary patent!
If you want more time to think about it, you can, as you reply to the Rule 71(3) communication, request a delay to the patent grant. The grant will then be published in April 2024 (or later), and after that you will have one month to decide whether or not the patent should be put in force as a unitary patent.
Read more about the two transitional provisions (1) and (2) here.
Furthermore, if you currently have a Rule 71(3) communication with an open response deadline, you can postpone the grant of your patent in the usual way: by responding to the Rule 71(3) communication without approving the text intended to be granted. Submitting a minor correction or two will lead to a new Rule 71(3) communication being issued by the EPO, which in practice delays the grant process sufficiently to make this patent eligible for unitary effect.
The new system has its advantages (the unitary patent covers a broad geographical area at a relatively low price), but it is certainly does not make European patenting any simpler. Don’t hesitate to contact Boco IP’s patent attorneys if you have any questions about the unitary patent, the UPC or European patents. We are happy to help.
Thomas Carlsson is Boco IP’s partner and member of the board. He published the book Good Patent Applications in 2021.
The unitary patent is coming soon. But what is it actually? The European patent system will undergo a significant change in 2023. When the European Patent Office (EPO) grants an application, the applicant can choose to receive a unitary patent which covers multiple countries. A Unified Patent Court (UPC) is about to be instituted this year, and it will have jurisdiction in all disputes which relate to unitary patents. Even disputes relating to old European patents may in some cases be resolved by the Unified Patent Court unless the proprietor requests an OPT-OUT from the new system. I will here explain the practical consequences of these changes for companies who own patents granted by the EPO or are currently applying for such patents.
The present system (1973 – 2022)
Almost all European countries have signed the European Patent Convention (EPC). These countries are marked red in figure 1. A patent right can be obtained in any of these countries by submitting a European patent application to the EPO.
Figure 1: The EPC countries
The EPO examines European patent application according to the criteria set forth in the EPC and decides whether or not the application can be granted. However, when the EPO grants an application, the applicant does not automatically obtain a patent which covers all the red countries. Instead applicants must choose where they want to put in force the patent right which the EPO has granted. This process is called validation of the European patent (or EP validation). European patents are usually not validated in all red countries because every validation produces additional costs and annuities must be paid separately in each country.
Let’s assume that an applicant validates a granted European patent in Finland, Sweden, Great Britain, Spain, Germany, Poland, Austria and Greece. The end result is illustrated in figure 2.
Figure 2: National validation
The applicant now owns a patent right in all EPC-countries where the European patent was validated. These rights are separate national patents and are therefore marked with different colors. These patents are not under the jurisdiction of a common European patent court (no such court exists in the present system). Instead, each national patent is under the jurisdiction of the corresponding national court.
The EU has a large internal market but the protection which can be obtained from a European patent is fragmented under a multitude of jurisdictions. If a patent right is infringed in multiple countries, the proprietor must undertake separate legal action in each country. Competitors must also file separate lawsuits in each country where they want to challenge an existing patent right. The main objective of the UPC system is to provide an improvement to this aspect of the European patent system.
The future system (probably from 2030 onwards)
It is easiest to understand the UPC system in its final form, after the transition period has ended. Presently this means the year 2030, it is possible that the system enters its final stage as late as 2037 if the transition period is extended.
In its final form the system will work like this:
European patent applications will be examined at the EPO just as before, so the criteria by which applications are judged will not change. Furthermore, all countries shown in red in figure 1 will still participate in one form or another in the system (either as a UPC member or as a non-member). It will be possible to obtain patents in exactly the same countries as before.
The most important novelty is this: When the EPO grants a European patent application, the applicant can decide to put the patent in force as a unitary patent which covers all UPC-countries. The 16 countries which have to date ratified the Agreement on a Unified Patent Court are shown in blue in figure 3. Eight further countries (Cyprus, the Czech Republic, Slovakia, Greece, Hungary, Oreland, Malta and Romania) will hopefully also ratify the agreement within a few years. Unitary patents are always under the jurisdiction of the Unified Patent Court. Just a single lawsuit to the UPC is needed if a patent proprietor suspects that patent infringement is taking place in many blue countries. The decision given by the court will cover all UPC countries. Competitors can likewise file an invalidation lawsuit at the Unified Patent Court. If the Court considers the patent invalid, the patent right will be simultaneously revoked in all blue countries.
Figure 3: The countries which have ratified the UPC Agreement
When the EPO grants a European patent application, the applicant can also validate the patent in any country. This EP validation yields a national patent under national jurisdiction, just as it does in the present system. A single European patent application can thereby yield the patent family illustrated in figure 4: a unitary patent (blue countries, UPC jurisdiction) + validated national patents (other colors, national jurisdiction).
Figure 4: A patent family in the future system
There is no obligation to use the unitary patent. In other words, the applicant can still perform national validations in any countries and obtain the patent rights illustrated in figure 2. But double patenting will be prohibited, so selecting the unitary patent according to figure 4 closes the possibility of national validation in UPC countries.
Transition phase (2023 – probably 2030): changes for new granted EP-applications
Let’s now take a look at the transition phase which begins nest year. At the time of writing (3/2022), practical preparations are under way for starting the operations of the Unified Patent Court and it looks like the UPC agreement will come into force in the fall of 2022 or the 2023 winter. This will mark the start of the transition period, when the system will work like this:
A. When the EPO grants a European patent application, the applicant can validate the European patent in any EPC country (the red countries in figure 1). The end result of this EP validation will then be a bundle of national patents.
Although EP validation is performed exactly like before during the transition period, the legal status of the validated patent will be different from what it used to be in the old system. All patents which are validated in UPC countries will during the transition period by default be placed under the jurisdiction of the UPC court when the new system is operational in 2023. These patents will therefore be both under the jurisdiction of a national court and under the jurisdiction of the UPC (unless the applicant makes an UPC OPT-OUT announcement – I will say more about this below).
Figure 5 illustrates a patent family obtained by validating a granted European patent in the colored countries during the transition period. The applicant has performed national validations in exactly the countries as in figure 2 but has not exercised the OPT-OUT. Finland, Sweden, Germany, Austria and Greece have been marked with striped colors to illustrate that these national patents are both the jurisdiction of both the UPC and the corresponding national court. The patents in Great Britain, Spain and Poland, on the other hand, are illustrated with a single color. They will not under any circumstance be under the jurisdiction of the UPC since these countries are not UPC states. Greece is here used as an example of a country which has not yet ratified the UPC agreement but may do so in the future. The status of the Greek patent will depend on Greece’s ratification status on the day when the patent was granted: if the grant occurs after Greece has ratified the UPC agreement, then figure 5 is correct. If it occurred before Greece ratified the agreement, then the Greek patent will not be under the jurisdiction of the UPC and Greece should instead be presented with a single color in figure 5.
Figure 5: Joint national and UPC jurisdiction
The proprietor of the patent family in figure 5 can file an infringement lawsuit with the Unified Patent Court if infringement takes place in any (striped) UPC-country. The decision given by the UPC will then have legal force in all striped countries. Alternatively, the owner could file separate infringement lawsuits with the national authorities in some or all of the striped countries. Correspondingly, a competitor who wants to invalidate the patent family illustrated in figure 5 can tackle this patent right in all striped UPC-countries with one UPC lawsuit, or alternatively deal with them one by one through national lawsuits. But neither the proprietor nor the competitor has any choice when it comes to Great Britain, Spain and Poland: the only way to enforce or invalidate this patent rights in non-UPC countries is to take action in national courts.
The proprietor can during the transition period remove all national patents shown in figure 5 from UPC jurisdiction by making an official OPT-OUT request. It’s possible to make the OPT-OUT request already when an application is being examined by the EPO. The OPT-OUT moves the patent family back to the status illustrated in figure 2: every national patent is only under national jurisdiction, so the proprietor and competitors can only take national legal action. Proprietors who change their mind about the OPT-OUT can return once more to the status shown in figure 5 by requesting an OPT-OUT cancellation. However, no further OPT-OUTs back to figure 2 will then be possible.
The OPT-OUT ensures that the patent proprietor will avoid situations where a competitor tries to invalidate a bundle of national patents at the Unified Patent Court. The OPT-OUT also closes the doors of the UPC for proprietors themselves, but they have the possibility of opening those doors back up by cancelling the OPT-OUT.
B. When the EPO grants a European patent application during the transition period, the applicant’s second option is to decide that the granted patent should be put in force as a unitary patent in the UPC countries. In addition to receiving the unitary patent, the applicant can also decide to validate the granted patent in non-UPC countries. The end result can then for example the patent family shown in figure 6.
Figure 6: A unitary patent and national patents
No OPT-OUTs can be made in the patent family illustrated in figure 6. It is not possible to convert the unitary patent into a bundle of national applications, and the unitary patent cannot be brought under the jurisdiction of national courts in UPC countries.
It should also be noted that a unitary patent can be obtained only through a European patent application which is granted by the EPO after the UPC has come into force, when the application is granted. The patent proprietor cannot convert a bundle of national patents (figure 2 or figure 5) into a unitary patent. This is true regardless of when the application is granted (before or after the UPC start).
Consequently, as soon as the UPC is in force (and the transition period has begun), the applicant has to make decision A or B for every European patent application granted by the EPO.
Additionally, the transition period also brings along some changes for national patent rights that were created by EP-validation before 2023.
Transition phase: changes for European patents granted and validated before 2023
Let’s assume you own a large European patent family which was created many years ago by validating a European patent in the countries which have been colored in Figure 7. The present legal status of this family is shown in Figure 7 – each patent is under national jurisdiction.
Figure 7: A patent family under national jurisdiction
Figure 8 shows the same patent family on the day when the UPC agreement enters into force. The status is unchanged in Great Britain, Spain, Poland and Turkey since these countries are not UPC members. But in the UPC member states of this family; Finland, Sweden, Germany, France, Austria and Italy, the start of the UPC system has shifted the national patents under UPC jurisdiction, although they also still remain under national jurisdiction. These countries have therefore been marked with striped colors.
Figure 8: The same family under joint jurisdiction.
The proprietor of the patent family in figure 8 can file an infringement lawsuit with the Unified Patent Court if infringement takes place in any (striped) UPC-country. The decision given by the UPC will then have legal force in all striped countries. Alternatively, the owner could file separate infringement lawsuits with the national authorities in some or all of the striped countries. The same options are available to a competitor who wants to invalidate the patent family. As before in figure 5, neither the proprietor nor the competitor has any choice when it comes to Great Britain, Spain and Poland: only national legal actions are possible in non-UPC countries.
OPT-OUT requests can be filed also for national patents created in UPC-countries through EP validation before 2023. An OPT-OUT request moves the patent family from figure 8 back to the initial state which was illustrated in figure 7. An OPT-OUT can be useful to the patent proprietor because it forces competitors to challenge the national patens one by one if they seek to invalidate this patent family. As mentioned above, proprietors can cancel the OPT-OUT if they at some point want to file an infringement lawsuit with the UPC.
Summary
It’s important to remember that all changes discussed above apply only to European patent applications filed with the EPO and national patents which have been created from such applications through EP-validation when they were granted. The changes do not concern patents granted by national patent offices such as Finland’s PRH. A patent granted by PRH will therefore never come under the jurisdiction of the UPC, but a European patent which was granted by the EPO and then validated in Finland will be under the jurisdiction of the UPC unless the proprietor exercises the OPT-OUT.
The new system has its advantages (the unitary patent covers a broad geographical area at a relatively low price), but it is certainly not any simpler than the old system. It’s a good idea to consult a patent expert when weighing the benefits, drawbacks and costs of the unitary patent and OPT-OUT decisions.
Don’t hesitate to contact Boco IP’s patent attorneys if you have any questions about the unitary patent, the UPC or European patents. We are happy to help!
Thomas Carlsson is Boco IP’s partner and member of the board. He published the book Good Patent Applications in 2021
We are honored to announce that IAM (Intellectual Assets Management) has rewarded Boco IP with the title Patent Prosecution firm of the year in Finland. IAM is a respected international research organization in the IP field.
The Global IP Awards gala dinner was held in London on 29 January 2019 – our Managing Director Karri Leskinen and European Patent Attorneys Jonna Sahlin and Anu Keinänen participated to receive the award. The atmosphere at this international event was warm.
”We have worked hard several years to be able to offer our customers the best possible expertise. This is truly a fine tribute for the work we have done. Our entire personnel is committed to offer the best customer experience and, therefore, this award is a way to say thank you to them. This award inspires us to invest even more in the development of our customer experience,” comments Karri Leskinen.
IAM conducts yearly its internationally recognized research among IP practitioners around the world. The research is respected widely and Boco IP has been mentioned for several years as one of the recommended patent prosecution firms in Finland. Also, many of Boco IP’s patenting professionals have been mentioned as recommended individuals.
