The system known as the “European Patent with Unitary Effect” (or “Unitary Patent,” as it is commonly referred to) entered into force on June 1, 2023.
This system consists of two European Union Regulations (EU 1257/2012 and EU 1260/2012), which define:
- the creation of a European patent with unitary effect for all participating countries, and
- An international agreement establishing a Unified Patent Court (UPC), which has exclusive jurisdiction to hear disputes involving these new unitary patents.
Under this new system, applicants for European patents who so desire may request that their European patent granted by the European Patent Office (EPO) have unitary effect in all countries that are participants in the system at that time. This means that the European patent will be considered in those countries as a single patent for all of them. One of the most immediate consequences of this system is that, if the unitary route is chosen, it will no longer be necessary to proceed with so-called national validations in the participating countries. However, if the applicant does not wish the granted European patent to have unitary effect, it will still be possible to validate the patent in those countries through the national route, as has been the case until now. In addition, it will still be necessary to validate the patent in countries that are not part of the system, such as Spain, the United Kingdom, Switzerland, Norway, Poland, Iceland, and Turkey, among others.
To benefit from this new system, applicants for European patents may request unitary effect within a non-extendable period of 1 month from the date the EPO grants the patent. This request, which does not entail the payment of any official fee, must be accompanied by a translation of the granted European patent into English, if the European patent was granted in French or German, or into any of the official languages of the EU, including Spanish, if the European patent was granted in English.
As of today, the countries that have already ratified the system—and are therefore part of the unitary patent system—are: Austria, Germany, Belgium, Bulgaria, Denmark, Slovenia, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, and Sweden, while the ratification process is underway in Cyprus, Slovakia, Greece, Hungary, Ireland, the Czech Republic, and Romania. Spain has not joined this system, although Spanish applicants for European patents will be able to benefit from it, just as applicants from any other country in the world can.
When deciding whether or not the unitary effect is appropriate for a granted European patent, the following considerations must be taken into account:
Advantages of the unitary effect:
- The patent will remain in force in all countries participating in the system through a single payment of an annual maintenance fee to the EPO, which will cover all countries participating in the system; therefore, it will not be necessary to pay individual maintenance fees in each of those countries.
- It will be possible to bring legal action against potential patent infringers in the various countries participating in the system through a single infringement lawsuit filed with the TUP.
- A translation cost reimbursement of €500 is provided for those European patents for which unitary effect is requested and that were originally filed by small or medium-sized enterprises, NGOs, etc., in a language other than English, French, or German.
Disadvantages of the unitary effect:
- The unitary patent will be subject to centralized invalidation proceedings before the UPC, which, if successful, will automatically invalidate the unitary patent in each and every country participating in the system. Such invalidation proceedings may be filed at any time during the term of the unitary patent.
- It will not be possible to surrender protection in individual countries by failing to pay the corresponding annual fees in countries that are no longer of interest, as is currently possible in the case of patents subject to the national validation system. If the maintenance fee for the unitary patent is not paid, the patent will be surrendered in all countries participating in the system.
- The annual maintenance fee for the unitary patent is relatively high and is equivalent to approximately 4–5 annual maintenance fees in individual EU countries such as France or Germany. Therefore, if protection is sought in three or fewer countries within the system, the unitary patent will generally entail higher maintenance costs than the system of national validations.
Finally, a very important point: As of June 1, 2023, the UPC will have exclusive jurisdiction over all unitary patents, but also, by default, over all traditional European patents—both future ones and those already granted by the EPO prior to the system’s entry into force. This means that European patents already granted may at any time be subject to invalidation proceedings before the UPC and may be invalidated in all countries where they are in force and which are party to the system.
To prevent this from happening, and for an initial period of 7 years from the system’s entry into force, holders of traditional European patents—that is, those that have followed the national validation route—may file a request to “opt out” of the jurisdiction of the UPC; however, it is not possible to request an opt-out for a unitary patent. This “opt-out” request entails the following:
- If such an “opt-out” is requested, the patents in question will no longer fall under the jurisdiction of the UPC, but will continue to be subject to the national courts of each country and will therefore be litigated in those courts, as has been the case until now.
- Conversely, in the absence of an “opt-out” request, granted European patents will fall under the jurisdiction of the UPC and may be invalidated in all countries participating in the system through a single invalidation action filed with that Court.
Consequently, all holders of traditional European patents—both those already granted and those to be granted in the future—must decide whether they wish to request an “opt-out” for those patents.
Naturally, it is not possible to offer general advice that applies to each and every case; each case must be examined individually, weighing the pros and cons for that specific situation and taking into account economic, commercial, and strategic considerations. To this end, ELZABURU has professionals who are already recognized as registered representatives before the TUP and who, therefore, can represent our clients before the Unified Patent Court and provide them with appropriate advice. For more information, please contact ELZABURU.
ELZABURU S.L.P.