The system known as the “European Patent with Unitary Effect” (or “Unitary Patent,” as it is colloquially referred to) is expected to become a reality in the first half of 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 will have exclusive jurisdiction over disputes involving these new unitary patents.
Currently, this system is in what is known as the provisional implementation phase, during which the necessary practical preparations (setting up the TUP’s headquarters, developing systems, hiring judges, etc.) are being made for the launch of this new court, which will have its main headquarters in Paris and Munich, as well as local offices in the countries participating in the TUP.
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 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, and does not entail the payment of any official fee.
As of today, the countries that have already ratified the system—and will therefore be part of the unitary patent system when it enters into force—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.
The unitary patent system will enter into force on the first day of the fourth month following Germany’s deposit of its instrument of ratification with the Council of the EU, which will mark the beginning of the “sunrise period.” The “sunrise period” is currently scheduled to begin on March 1, 2023, and the Treaty is scheduled to enter into force on June 1, 2023. Starting January 1, 2023, holders of European patent applications nearing grant may either delay the grant to ensure they are in time to request unitary effect once the system becomes operational, or file a request for unitary effect in advance.
Finally, a very important issue on which the holders of currently granted European patents must make an immediate decision: the exclusive jurisdiction of the UPC will apply, from the first day of its entry into force, to all European patents for which unitary effect is requested, but also, by default, to existing European patents granted by the EPO prior to the system’s entry into force. This means that these already granted patents could face invalidation proceedings before the UPC as soon as the system enters into force. If this were to occur, the European patent could be invalidated in all countries participating in the system where it is in force.
To prevent this from happening, holders of already granted European patents whose patents are in force in any of the countries participating in the system will have the option, during the “sunrise period, ” to file a request to “opt out” their patent(s) from the jurisdiction of the UPC, which entails the following:
- If such an “opt-out” is requested, the affected patent(s) will no longer fall under the jurisdiction of the TUP but will continue to be subject to the jurisdiction of each country’s national courts and will therefore be litigated before 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, holders of European patents granted to date must decide now whether they wish to request an “opt-out” for those patents, so that they can prepare to file the “opt-out” request within the three-month “sunrise period.”
Naturally, it is not possible to offer general advice that applies to every single case; each case must be examined individually, weighing the pros and cons for that particular situation and taking into account economic, commercial, and strategic considerations. To this end, ELZABURU has professionals with the necessary qualifications to represent our clients before the Unified Patent Court, who can provide them with advice. For more information, please contact your usual point of contact at ELZABURU, or send your questions to patenteunitaria@elzaburu.es
ELZABURU S.L.P.