The European patent system is undergoing significant changes in 2023. It is expected that a new Unitary Patent system will become available to pending European patent applications and issued European patents, and that the Unified Patent Court (UPC) will be in full operation on June 1, 2023.
This article highlights some key features about the UP system and the UPC, and provides steps that patent owners and applicants should take in preparation.
Unitary Patents
What is it?
The Unitary Patent will provide another option for obtaining patent protection in Europe, in addition to the current national patents and "classic" European patents.
A Unitary Patent will provide patent protection in up to 25 European Union (EU) Member States. The 17 states which already ratified the Agreements and will participate in the Unitary Patent are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.
How to obtain one?
To register a Unitary Patent, an applicant must first obtain a European patent. The process for obtaining a European patent remains unchanged.
If a European patent has been granted on or after June 1, 2023, the patentee may file a request for unitary effect at the EPO to obtain a Unitary Patent. No government fee is required, and the request must be filed within one month of the date of publication of the mention of the grant in the European Patent Bulletin.
What are some benefits?
Compared with the current “classic” European patents, Unitary Patents have some potential advantages:
- Unitary Patents generally make the post-grant procedure simpler and more cost effective for patentees who wish to obtain patent protection in multiple Member States (rule of thumb is that costs of a single Unitary Patent is generally comparable to validation of a European patent in three individual Member States)
- Unlike classic European patents that need to be validated in selected countries, Unitary Patents do not require complex and costly national validation procedures
- Unitary Patents do not require post-grant translations after a six-year transitional period
- A new Register will be available for Unitary Patents, for providing legal status information relating to Unitary Patents, e.g. on licensing, transfer, limitation, revocation and lapse. For example, transfers and licenses for Unitary Patents can be registered centrally at the EPO, instead of through multiple registrations in national patent registers on a country-by-country basis
- A single annual renewal fee for a Unitary Patent is paid to the EPO, in Euros, instead of paying different national renewal fees in different currencies to multiple patent offices.
What to be wary of?
Despite the possible benefits listed above, there are also some potential drawbacks:
- All Unitary Patents will be in the exclusive jurisdiction of the UPC and cannot be litigated in individual Member States
- There is no option to reduce annual renewal fees by allowing the patent to lapse in some Member States while maintaining the patent in other Member States
- Cost benefits may not be realized if the European patent would otherwise have been validated in fewer than three Member States
Unified Patent Court
What is it?
The Unified Patent Court (UPC) is an international court that will be set up by participating EU Member States. The UPC will be a specialized patent court with jurisdiction for litigation relating to Unitary Patents and European patents.
What are some benefits?
Compared with the existing litigation mechanism in individual national courts, the UPC has some possible advantages:
- The UPC can reduce or terminate expensive parallel litigations in different EU Member States. Litigation in multiple countries can be expensive and can result in diverging decisions
- For patentees, the UPC can offer enforcement of valid patents, with Europe-wide effects of decisions, injunctions and damages
- For third parties and the public, the UPC can provide a central revocation action, separate from the EPO's opposition procedure, at any time during the life of the patent
What to be wary of?
There are also possible disadvantages with the UPC compared to the current system.
- It is still unclear how the UPC will rule on specific issues since the case law of the UPC is yet to be developed
- Decisions made by the UPC will apply to all participating EU Member States
- Individual national courts may have procedural advantages over the UPC, such as allowing for in-person testimony from expert witnesses
Steps to Take in Preparation
European Patents Granted before June 1, 2023
By default, if a patentee does not expressly opt out the UPC before June 1, 2023, a European patent is automatically opted in to the UPC. As a result, both the UPC and the national courts will have jurisdiction over the European patent. If a patentee does opt out of the UPC, only the national courts have jurisdiction over the European patent.
If a patentee does not wish for their granted European patent to be under the jurisdiction of the UPC, they can opt out during a sunrise period, starting on March 1, 2023.
Beware: if a third-party launches an action against a European patent in the UPC during the sunrise period, it will not be possible to opt-out that patent from the UPC afterwards.
Pending European Patent Applications
With respect to pending European patent applications, the decision to opt-out can be made at grant on or after June 1, 2023.
If an applicant is interested in the UP, they should request a delayed grant of the application, so that the application is still pending when the UP becomes available on June 1, 2023, and the applicant can have the option to proceed with a Unitary Patent.