The unitary patent has finally arrived.
Patent protection for Europe has been around for a long time. Until now, however, the European patent was broken down into a bundle of individual national patents after it was granted. Now there is the unitary patent, which currently offers you protection in 18 countries.
Since June 2023, there has also been a new court common to the European countries that rules on patent disputes: the Unified Patent Court.
The unitary patent offers protection for your innovations in Europe. Right, European patents – haven’t they been around for a long time? Yes – but until now they have been broken down into individual national patents after they were granted.
Now you have a choice. You apply for a patent for an invention at the European Patent Office, as has long been customary. When the patent is granted, you can decide whether you want the classic bundle patent consisting of individual national patents or the unitary patent.
The unitary patent or patent with unitary effect (EPeW) currently offers you protection in 18 countries. Further countries have announced their ratification.
The idea of creating a standardised patent system valid for all countries of the European Union dates back to the 1970s. Parallel to the creation of the European patent you are familiar with, the main features of a patent for the common market were already being developed. The various attempts in 1975, 1989, 2000 and 2003 always failed, in particular due to the issue of the language system. In 2011, all EU member states, with the exception of Spain and Italy, decided to create a unitary patent system as part of enhanced cooperation. In addition to the patent as a property right, intensive negotiations were held on a jurisdiction that would be responsible for infringement and nullity proceedings.
At first, it seemed likely that the regulations would come into force in 2014. Various lawsuits against the adopted regulations, including before the Federal Constitutional Court, and not least the UK’s withdrawal from the European Union, made failure appear possible until the very end.
Since Germany deposited the instrument of ratification for the Protocol on Provisional Application to the Agreement on a Unified Patent Court, the minimum quorum has been reached.
The European Patent Court commenced its activities on 1 April 2023.
The Unitary Patent – Introduction
The European patent you are familiar with under the European Patent Convention (EPC) breaks down into individual national patents after grant.
Therefore, following grant, you select the countries in which you want patent protection for your invention. This is known as validation. The so-called national parts of the European patent are exclusively subject to national legislation and national jurisdiction with regard to questions of patent infringement and nullity, although there are standardised principles.
As a result, an infringer must be sued in every contracting state and an action for invalidity must be brought in every contracting state. Once granted, the Unitary Patent applies to all states participating in the system at the time of grant. If an infringement is determined by the Unified Patent Court in a participating state, this determination also applies automatically in every other participating state. If the patent is declared invalid in , it lapses altogether. In its effect, the Unitary Patent is therefore to a certain extent comparable to the European Union trade mark or the Community design, which are valid as protective rights for all states of the European Union.
Application and grant
The patent with unitary effect (EPeW) is granted by the European Patent Office (EPO). The application and grant procedure is identical to the procedure for applying for a European patent (EP) under the rules of the EPC. Initially, therefore, nothing changes for the applicant.
In order to utilise the new unitary patent system, a “request for unitary effect” must be filed. This must be filed no later than one month after publication of the mention of the grant of the European patent in the Patent Bulletin pursuant to Art. 97(3) EPC. This time limit cannot be extended. We will assist you in this process and inform you of all deadlines and decision options in good time.
The request can be filed for all European patents for which the decision on the grant of the European patent is available on or after 1 April 2023.
Participating countries
With the exception of Croatia and Spain, all EU member states are participating in the enhanced cooperation in the area of creating a unitary patent. As things stand today, the unitary patent will initially be available for 18 states:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia and Sweden.
Further countries will be added. Cyprus, Greece, Ireland, Poland, Slovakia, the Czech Republic and Hungary have also signed the agreement. Croatia and Spain will also be able to decide to join at a later date.
In practice, one applicant currently receives the unitary patent for 18 countries. All the advantages of the new system can be utilised in these countries and the European patent has a uniform effect.
If patent protection is required in other countries that are not among the 18 participating countries, protection can easily be generated in parallel for other individual countries using the familiar validation system.
Costs
The costs of the Unitary Patent and the old European Patent can be divided into the costs of the application and grant procedure, the costs of validation and the costs of subsequent administration. Of particular importance are any costs in the event of patent disputes, which we will discuss in connection with the explanations on the new jurisdiction.
Application and grant procedure
As the application and grant procedure will be retained from the EPC system, the costs for these two stages of the procedure will not change. The costs for the application and the grant procedure are therefore identical for the European patent with unitary effect (EPeW) and the European patent under the EPC (EP).
However, the costs after grant are different for both systems.
For the well-known European patent system, which is broken down into individual national patents, individual countries must be selected. The patent is then “validated” in these countries. In the EPC system, validation is understood as the fulfilment of the requirements for the validity of the European patent in the individual EPC states. This includes, in particular, the submission of translations and the appointment of national representatives in the EPC system. Costs are incurred for these processes for each of the selected countries.
This is not the case with the Unitary Patent. It is also stipulated that the Unitary Patent must be translated into English in its entirety if the application was filed in German or French. However, if the application text is in English, a translation into German or French is required. This will of course incur costs.
Administration/annual fees
The costs of administering the EPeW and the EP are essentially determined by the annual fees incurred. Further administrative costs may be incurred, for example, due to transfers, etc. Renewal fees under the traditional European patent system must be paid in the selected national states as soon as the patent has been validated there.
For the EPeW, a renewal fee must be paid centrally to the European Patent Office. It was decided that this annual fee to be paid would roughly correspond to the total annual fees of the (then) “True Top 4” of the EPC, i.e. Germany, France, the UK and the Netherlands. The idea behind this was to attract all those applicants who had previously validated EPC patents in these countries as participants in the EPeW.
We would be happy to advise you on costs and fees in the European countries relevant to you.
The Unified Patent Court – Introduction
The Unified Patent Court (UPC) is an EU jurisdiction established in 2023, which is an integral part of the European patent system with unitary effect (EPeW). The UPC rules on both the infringement and invalidity of Unitary Patents. However, the UPC will not only be responsible for unitary patents.
Particularly important for you as the owner of existing European patents: existing European patents under the EPC (EP) will also be subject to the jurisdiction of the UPC from 2023. This will bring about a standardization of the previously partially differing jurisdiction in the patent system of the EPC.
The decisions of the UPC apply system-wide. A decision on invalidity or infringement therefore applies to all states in which the Unitary Patent or the European Patent under the EPC is valid. This is a significant change for EPC patents, as previously the decisions of the national courts only applied to the respective national part.
Structure of the Unified Patent Court
The Unified Patent Court (UPC/UPC) consists of local or regional divisions and the so-called central division in the first instance. The court of second instance is located in Luxembourg. The CJEU serves as the court of last instance.
Local and regional chambers
Local divisions are court locations within the states. In Germany, local divisions are established at the regional courts in Munich, Hamburg, Mannheim and Düsseldorf. Regional divisions are set up jointly by several states. For example, the Baltic states and Sweden have decided to set up a joint regional division.
The local and regional divisions are called upon in the event of patent infringements. In the event of an action for revocation brought against the allegedly infringed patent, the local or regional chamber dealing with the infringement issue is responsible.
Central division
The central division is responsible for nullity actions that are not related to infringement proceedings (isolated nullity action). The central division is also competent for infringement actions if no local or regional division is available or the infringement action concerns a defendant outside the contracting states. Otherwise, the central division is responsible for declaratory actions. The central division has its seat in Munich, Paris and Milan. Jurisdiction depends on the respective technical field.
Opt-out / opt-in option
The new jurisdiction of the UPC is automatically responsible for all existing EPs and for the new EPeW. A decision of the UPC will take effect for all 18 participating countries – this applies both to existing EPs and to a newly granted EPeW.
For existing UPCs, the holder can still influence the jurisdiction of the courts during a transitional period until 2030 (extendable by a further 7 years) by submitting a so-called opt-out application.
With such an application, the national courts retain jurisdiction for the respective EP. The application can be submitted again after seven years and extended for a further seven years. An opt-out request is only possible if no proceedings are pending before the UPC (e.g. through an action for annulment).
Conversely, it is also possible to file an opt-in application at any time for an as yet unspecified fee, so that patent infringement and nullity proceedings are heard by the UPC.
Pros and cons of EPeW
The extent to which the EPeW, the EPC, a combination of the two systems or even filing individual national applications is worthwhile for you depends on your patent strategy, in particular your choice of country.
The advantage of the EPeW is its uniform effect in the participating states. The previously necessary validations in EPC states are no longer necessary. The cost of renewal fees will also be reduced if you have previously selected more than four EPC states participating in the EPeW system.
The problem is that key countries in Eastern Europe and Spain are not yet participating in the system. These can only be added separately. Great Britain will not be accessible via the EPeW.
The first cases have already been decided. The coming years will show whether the new jurisdiction will be based exclusively on the practice of the European Patent Office or whether it will follow its own line, which may also be shaped by the principles of national case law.
So far, the short duration of proceedings has been encouraging. We are following developments closely for you and will be happy to advise you in detail on your individual situation.
Your desicion
It is now up to you to decide what to do with your patent applications and granted patents.
- Should a request for a patent with unitary effect be filed if your patent applications are still pending at the EPO?
- Do you also need protection in countries that do not participate in the EPeW?
- Would you like to make use of the opt-out option? Or should all proceedings take place before the UPC?
If you need further assistance or information, please give us a call. We are always available for you.
More information:
Unitary patent guide
https://www.epo.org/applying/european/unitary_de.html
Unitary Patent Court
https://www.unified-patent-court.org/en
