The Unitary Patent (UP) system will allow applicants to get uniform patent protection in up to 25 EU Member States by submitting a single request to the European Patent Office (EPO) after publishing of the granted European patent and is now intended to start on 1 June 2023.
The UP system is linked to the creation of the Unified Patent Court (UPC), which will have jurisdiction over Unitary Patents and "classic" European patents. In order to allow future users to prepare themselves for the new system, the EPO has decided to introduce two transitional measures which will be made available ahead of the entry into force of the Unitary Patent system, as of 1 January 2023.
When the UP system enters into force, the Unitary Patents will cover the member states which have already deposited their instrument of ratification. Up to the moment, the 17 member states which will participate in the Unitary Patent when it starts are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
It is expected that outstanding ratifications take place successively for the members participating in the enhanced cooperation, namely, Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, and Slovakia.
For the countries which are not members of the UP system, such as the United Kingdom, Spain, Switzerland, Turkey and Croatia, the "classic" route, i.e., national validation, applies.
"The UP system is linked to the creation of the Unified Patent Court (UPC), which will have jurisdiction over Unitary Patents and "classic" European patents. In order to allow future users to prepare themselves for the new system, the EPO has decided to introduce two transitional measures which will be made available ahead of the entry into force of the Unitary Patent system, as of 1 January 2023."
Transitional period (Sunrise period)
At the moment the UPC Agreement entries into force, two transitional measures are predicted for the European patent applications which have reached the final phase of the grant procedure, namely:
- Applicants may file early requests for unitary effect before the start of the Unitary Patent system
In this case, the unitary effect will be registered when the Unitary Patent system starts, provided that all corresponding requirements for registration are met.
- Applicants may request a delay in issuing the decision to grant a European patent by the EPO
Since the Unitary Patent protection can only be requested for European patents granted by EPO on or after the date of entry into force of the UPC Agreement, this measure will make it possible to postpone the granting date of the European patent to make it eligible for Unitary Patent protection.
- National validation processes will be no longer needed, and one single renewal fee will be payable to the EPO.
All post-grant administration will be handled by the EPO, reducing the costs and the administrative workload.
- After a transitional period of six years (extendable), no translations are needed. During the transitional period, a full translation of the European patent is required, however, the translation is for information only and has no legal effect.
For example, when the European patent was filed in English, its translation to any other official language of a member of the UP system is different from the language of proceedings before EPO is accepted, such as Portuguese.
Also, a compensation scheme will cover the costs of translating the application in the pre-grant phase for EU-based SMEs, natural persons, non-profit organizations, universities, and public research organizations, when the request of examination of the European patent application or Euro-PCT application leading to the UP was filed in an official EU language other than English, French or German.
- Centralized legal decisions regard infringement and validity issues since the UPC will have exclusive competence in the contracting member states.
As regards litigation involving "classic" European patents, for a transitional period of seven years (extendable), actions for infringement or for revocation may still be brought before national courts and the patent owner will be able to opt-out of the UPC's jurisdiction for the entire lifetime of the patent. However, opting out is not possible for UP.
- "Classic" European patents will remain in force and unchanged with the creation of the UP system.
The applicant will be free to choose between the UP system, the "classic" system, or both of them, depending on the costs involved, the protection strategy and the countries of interest.
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.