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A Unitary SPC? Will the Unitary Patent pave the way for a centralised SPC system?

Posted: August 26, 2022

Preparations for the Unified Patent Court (UPC) and European patent with Unitary effect (Unitary Patent (UP)) are nearing completion. Work has now begun on the final preparations to establish the UPC, such as the setting of budgets, testing of electronic systems and the appointment of judges.

Once Germany has deposited their instrument of ratification, the UPC agreement will come into force shortly after – giving birth to the UPC and the UP. The sunrise period for filing opt-out requests for granted European patent families and Supplementary Protection Certificates (SPCs) will begin three months before the UPC agreement comes into force. For more information on the UP and UPC, please see our UPC guide.

 

A unitary SPC?

Hot off the heels of the UP, in April 2022, the European Commission closed a call for evidence on the possibility of introducing a centralised procedure for granting an EU-wide SPC. Currently, SPCs are granted nationally in each European country.  The European Commission aims to review the evidence and create an “impact assessment” on how to implement a unitary SPC system.

The Commission is considering a “Unitary SPC” based on a Unitary Patent and/or a unified grant procedure based on a traditional European patent that will result in a bundle of national SPCs. Regardless, it seems that this could, potentially, put an end to the decentralised process of applying for an SPC before each national patent office and the associated divergences in grant, revocation and enforcement outcomes.

 

The new system

 While we are monitoring the situation closely, concrete details of how the new SPC system may function are unknown. A few issues that are currently being discussed concern:

• Who will grant unitary SPCs? The Commission has suggested a “virtual examining office” whereby SPC examiners from national patent offices will examine SPC applications. However, the EPO, EUIPO and the EMA may alternatively or additionally be involved.
• Where will infringement and validity actions be filed? Can an action be brought before a national court and be valid before all member states of the Unitary SPC or will a single court (e.g. the UPC) issue decision having effect in all member states?
• What is the territorial scope of a unitary SPC? A key requirement for grant of an SPC in a particular country is the presence of a marketing authorisation (MA) permitting the product to be placed on the national market. With this in mind, can unitary SPC applications only be supported by European centralised MAs or can national/regional MAs be used to support a Unitary SPC application? Will the UK play any involvement in the Unitary SPC system following the UK’s departure from the European Union?
• What will the fee structure be for Unitary SPCs?

A unified SPC system is likely to be welcomed by patent holders because, as with the Unitary patent, there should be significant cost savings in terms of reducing complexity and reducing the renewal fee payments during the life of the SPC.

Forresters’ SPC experts are monitoring the situation closely and await issuance of the European Commission’s impact assessment. If you have any questions concerning the UP, UPC or the possibility of a unitary SPC, please contact your normal Forresters attorney.