The Unitary Patent |
With its impressive team of patent attorneys from many European Countries, P&TS is qualified to advise clients to select the best strategy in the evolving landscape for patent protection in Europe and to perform the required procedural acts for obtaining Unitary Patents.
Furthermore, the P&TS team comprises litigators with a Diploma in Patent Litigation in Europe, authorized to represent clients before the Unified Patent Court.
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| A Unitary Patent is an option for granted European patents.
European patent applications have a central examination procedure before the European Patent Office (EPO) until grant. When the EPO grants a patent, the European patent can be validated in one or more of the 38 countries of the European Patent Convention (EPC) of interest to the patent proprietor, turning into a bundle of independent national patents. This means that currently (July 2022), for example, nullity actions after the opposition period are dealt with at a national level and therefore may need to be repeated in each validated country. With the entry into force of the Unified Patent Court (UPC) Agreement approximately between the end of 2022 and the beginning of 2023, determining the applicability of the so-called “Unitary Patent Package”, it will be possible to obtain at the EPO a Unitary Patent (UP) within 1 month after the publication of the mention of grant. The UP will have a unitary character so that it can only be limited, transferred, revoked, or lapse, in relation to the entire territory it covers. Annual fees will have to be paid directly to the EPO in a centralized way. For the time being, that territory extends to the 17 EU Member States that have ratified the UPC Agreement, namely: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Further EU Member States are expected to join in the future. Switzerland is excluded from the Unitary Patent since it is not a Member State of the EU. After the grant of an EP patent, the patent proprietor can therefore select one of the options here listed:
It is not possible to simultaneously validate in the same countries (emphasis) an EP patent both as a Unitary Patent and as a bundle of national patents. During a transitional period, any request for a Unitary Patent based on a granted EP patent will need to be:
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Unified Patent Court
A new court, the Unified Patent Court (or “UPC”), will be implemented in this evolving European patent protection landscape.
UPC will be a common court for all the contracting states party to the UPC Agreement and will have exclusive competence concerning infringement actions and the validity of UPs.
Moreover, it will also have exclusive competence in respect of traditional EP patents validated in one or another contracting state(s), unless the latter are “opted out”, including EP patents that have been granted before the entry into force of the Unified Patent Court.
The UPC will comprise the First Instance, with a central division and various local/regional divisions located in the different Contracting EU Member State, and a Court of Appeal.
The UPC can refer questions on the interpretation of EU law to the Court of Justice of the European Union (CJEU).
Opt-out / opt-in
An opt-out request allows excluding a traditional EP patents or EP patent applications from the jurisdiction of the UPC. In this case, the competent courts remain the national courts of the countries in which the proprietor validates an EP patent.
This option is not available for Unitary Patents as the UPC holds exclusive competence for Unitary Patents.
The UPC Agreement will enter into force on the 1st day of the 4th month after the deposit of Germany’s instrument of ratification. This will define a period of at least 3 months and at most 4 months, called the “sunrise period”, before the start of this new system. It is currently expected that this entry into force will occur at the end of 2022 or the beginning of 2023.
During this period, EP patent proprietors and applicants can file early out-opt requests.
It will also be possible to request an opt-out during a transitional period of at least seven years after the start of this new system.
It is not possible to file an opt-out request if the EP patent has already been involved in proceedings before the UPC.
An opt-out request can be withdrawn at any time (opt-in) if the EP patent has not already been involved in proceedings in a national court.
Under the circumstance that a patent proprietor does not opt for any option, the national courts or the UPC inherits exclusive competency for traditional EP patents depending on the court where a plaintiff files the first action.
| Other transitional measures
Possibility to request a delay in issuing a decision to grant Upon an applicant’s request, the EPO delays issuing its decision to grant an EP patent so that the mention of the grant will be published on or immediately after the date of entry into force of the UPC Agreement. The request is validly filed only for EP patent applications in respect of which the applicant has received a decision of grant from the EPO but has not yet approved the patent text. This possibility ceases to have effect on the date of entry into force of the UPC Agreement. Possibility to file early requests for unitary effect Early requests for unitary effect will be allowed to be filed as of the date of deposit of Germany’s instrument of ratification of the UPC Agreement. Early requests for unitary effect may only be filed for EP patent applications in respect of which a decision for grant has been dispatched. The filing of an early request for unitary effect does not imply that the EPO will delay issuing the decision to grant a European patent. The possibility to request a delay or to file an early request for unitary effect is only possible during the sunrise period (between 3 to 4 months before the UPC agreement enters into force). |
EUROPEAN PATENT APPLICATION – UNITARY PATENT
To be recommended if:
Patent protection is desired in a considerable number of EU Member States participating in the UPC, typically more than 4.
Possibility of obtaining pan-European injunctions and damages.
To avoid if:
Patent protection is desired in few states participating in the UPC, typically less than 4.
The risk of a central revocation action before the UPC, in particular if the patent is potentially vulnerable to revocation actions.
Tight budget, especially in case of a patent dispute involving the UPC.
