Finally, after around a decade of gestation, the Patent with Unitary Effects (or Unitary Patent) is effectively launched in Europe. From June 1st, 2023, in addition to the country national patents or the European Patent (EP), every applicant - wishing to obtain patent protection in 17 countries of Europe - can also chose the Unitary Patent.
The unitary patent is a patent granted by the European Patent Office ("EPO") and valid in 17 European countries, those EU Member States participating in enhanced cooperation and having ratified the Agreement on a Unified Patent Court (UPC Agreement). And more EU countries are joining soon!
The Unitary Patent is based on a European patent granted by the EPO under the rules and procedures of the EPC. Therefore, the patent applicant, once the European patent is granted, can request unitary effect for the territory of those 17 EU Member States participating in enhanced co-operation and having ratified the UPC Agreement. The Unitary Patent does not need validation in every country nor country maintenance fees.
The Unitary Patent does not affect the EPO's search, examination and granting procedures. It does not replace the existing routes to patent protection in Europe, but is an additional option alongside national patents and "conventional" European patents.
The European Patent
Since the EPC's entry into force on 7October 1977, the EPO has granted patents upon centralized examination, saving applicants the cost of filing national patent applications with the national offices while ensuring the high quality of the patents granted.
However, an EP patent must be validated and maintained in each country where the patent owner wishes it to take effect. Validation requirements and procedures differ between countries and usually lead to higher costs, such as translation costs, validation fees (i.e. fees due in some member states for publication of the translations) and associated representation costs, such as the attorney fees charged for the administration of the patent (i.e. payment of national renewal fees).
Member states of the EPO: Albania, Austria, Belgium, Bulgaria, Switzerland, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, United Kingdom, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Liechtenstein, Lithuania, Luxembourg, Latvia, Monaco, Montenegro, North Macedonia, Malta, Netherlands, Norway, Poland, Portugal, Romania, Serbia, Sweden, Slovenia, Slovakia, San Marino, Türkiye.
Extension State: Bosnia and Erzegonijia
Validation states: Morocco, Republic of Moldova, Tunisi, Cambodia.
The Unitary Patent
Differently than the EP patent, the Unitary Patent is born within the European Union and - at currently -only among certain EU member states, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.
Herein few main characteristics of the Unitary Patent:
- Unitary Patents remove the need for complex and costly national validation procedures.
- The EPO is in charge of the technical operation of the Unitary Patent.
- No additional fees are due for the filing and examination of the request for unitary effect.
- No post-grant translations will be required after a six-year transitional period. During this period, a translation will be required for information only and will not have any legal effect.
- Unitary Patents are not subject to the currently fragmented renewal fee system:
- The renewal fees have been set at a very competitive level and are particularly attractive for the first ten years. There is only one procedure and one deadline, all payments are made in euros and there is no obligation to use a representative.
- All post-grant administration is handled centrally by the EPO.
- The online register includes information on the legal status of Unitary Patents - notably on licenses and transfers.
Unitary Patents confer uniform protection since the substantive patent law is unified and the Unitary Patent Court Agreement has also entered in force.
Unified Patent Court
The UPC is a new European court created with jurisdiction over infringement and validity of Unitary Patents and - also - "conventional" European patents. The UPC is regulated by Unified Patent Court Agreement of 19 February 2013 (see?OJ EPO 2013, 287).
Currently, national courts have jurisdiction over the infringement and validity of European patents. When a patent owner wishes to enforce a European patent in several countries or when a third party seeks the revocation of a European patent, complex and costly parallel litigation shall be initiated with also the risk of diverging decisions and a lack of legal certainty.
The UPC Agreement addresses these shortcomings by creating a specialised patent court with exclusive jurisdiction for litigation relating to Unitary Patents and European patents.
Filing an Opt-out
Starting from June 1st, 2023 the Unitary Patent Court has exclusive jurisdiction not only on Unitary Patents, but also on "classic" European patents, unless an Opt-Out application is filed.
Applicants for and owners of a "classic" European patent, as well as holders of a supplementary protection certificate (SPC) issued for a product protected by a "classic" European patent, can opt out from the exclusive competence of the Court. As a result, the UPC will have no jurisdiction concerning any litigation related to this application, patent or SPC.
Please note that it is not possible to opt out a Unitary Patent from the UPC's competence.
Conditions or a valid opt-out
- The opt-out can only be made in respect of all states for which the European patent has been granted or which have been designated in the application.
- An opt-out is only possible as long as no action has been brought before the UPC in respect of this application, patent or SPC.
- The application to opt out can only be made via the Case Management System of the Court.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.