[UPDATED following completion of ratification procedure on 17 February 2023]
European Unitary Patents and the Unified Patent Court
Two important changes are happening in connection with European Patents
1. The European Patent with Unitary Effect (the "Unitary Patent") and
2. The Unified Patent Court.
The new systems will come into force on 1 June 2023. A short explanatory video from the Chartered Institute of Patent Attorneys can be viewed here.
The Unitary Patent will be granted on the basis of a standard European Patent Application, if Unitary Effect is requested. When the system starts, the Unitary Patent will cover the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. The same countries will be under the jurisdiction of the Unitary Patent Court.
At a later date, Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia may join the system. However, non-EU countries, such as the UK, Norway, Switzerland and Turkey, cannot participate. Moreover Spain, Poland and Croatia, will not be joining. It will still be possible to cover any or all EPO countries, whether they have joined the Unitary Patent scheme or not, by a classical (non-unitary) European Patent.
The Unified Patent Court will be competent to decide matters relating to infringement and validity of Unitary Patents. In addition, it will decide on traditional European patents for the countries listed above – as long as these patents are not opted out (see below).
A European patent will have unitary effect if a request for unitary effect is filed at the European Patent Office within one month after the date grant. Where the patent is in English, a translation of the patent into one other EU language must be filed.
In order to keep the Unitary Patent in force, the owner will need to pay a single annual renewal fee to the EPO. This fee is set the same as the total of the fees for renewing a patent in the four biggest of the 17 countries individually. Taking agency fees into account, if the decision is made on pure cost grounds, it will be worth requesting unitary effect if protection is required in at least three of the 17 countries. However, if you have a Unitary Patent, it will not be possible to pay the renewal fee for only some of the countries and so you cannot reduce the cost of renewal if your target market is less than three Unitary Patent countries.
As mentioned above, the Unified Patent Court also has jurisdiction over traditional European patents. Thus, a third party can seek to invalidate a European patent in all participating member states where it is in force by means of a single action before the new court.
To avoid this risk, it is possible to opt out traditional European patents and pending European patent applications from the jurisdiction of the Unified Patent Court, at least for a transitional period of seven years. Opting out is only available for traditional European patents, not Unitary Patents.
If opted out, a European patent can only be litigated in the national courts of the participating member states. It cannot be attacked centrally – except in EPO opposition proceedings.
An opt-out can be revoked at any time, provided that the patent has not been the subject of infringement or validity proceedings before a national court of the participating member states during the period of the opt-out. Once the opt-out is revoked, it cannot be re-activated.
If a request is made for unitary effect after the patent or application has been opted out, the opt-out is negated.
Whether to opt out a particular patent or application depends on its strength and value, and the likelihood of litigation. Therefore, we recommend that you review the whole EP Patent portfolio of your business and analyse it strategically taking into account the above information. We can naturally provide further advice in this regard and stay at your disposal should you wish to organise a meeting with us
Timings and transitional measures
The agreement will enter into force on 1 June 2023. European Patents must be granted after this later date to become Unitary Patents, and it is also the start of operations in the Unified Patent Court.
It is possible to defer the grant of European Patent Applications that have been allowed, so that they will only be granted after the agreements enter into force and can enjoy Unitary Effect, on the filing of a valid request. It will also be possible to file early requests for Unitary Effect for pending applications that have been allowed.
During a 'sunrise period' of three months prior to the formal commencement date (i.e. from 1 March 2023), it will be possible register opt-outs of European Patents and European Patent Applications. Since there are likely to be a large number of opt-out applications to be processed by the new Court, it is recommended that any opt-out applications be filed as early as possible, to minimise the risk of recordal being delayed until after commencement of the new system.
These new developments constitute the biggest change to the European patent system since the launch of the EPO in the late 1970s. The notes above are intended as general guide to some of the more important aspects of the new procedures but they should not be regarded as legal advice in relation to any specific European patents or applications. Please contact us for further information and advice in relation to specific cases.