Increased Complexity in European Post-Grant Procedures Under the New Unitary Patent System: What You Need to Know

According to the European Patent Office’s Unitary Patent Guide, one of the main advantages of the unitary patent is that it reduces complexity: “The Unitary Patent makes the European patent system simpler”.

From some perspectives, this might be true – if you normally validate your granted European patents in a larger number of countries, or if you regularly engage in pan-European patent litigation – but for most applicants, the assertion is questionable at best. Under the new unitary patent system, the flexible and (relatively) easy-to-understand national validation system is being supplemented and modified, not replaced, by the new unitary patent system.

Below, we untangle the thicket of decisions and deadlines that need to be made under the new European patent post-grant procedure.

The Old National Validation Procedure

Now that the European Patent Office’s (“the EPO”) transitional measures relating to the unitary patent have come into effect, it is already possible for applicants to request unitary patents (perhaps confusingly referred to officially as requesting “unitary effect”), it seems that we can start referring to the pre-unitary patent national validation procedure as the “old” national validation procedure. It is worth recapping this old procedure before diving into the new.

Under the old national validation procedure, once a European patent is granted by the EPO, the patent owners have a window of time within which they can validate the European patent in as many or as few of the member states of the European Patent Organisation as they like. The member states of the European Patent Organisation include all the member states of the European Union, as well as many countries outside the EU, such as Norway, Switzerland and, nowadays, the United Kingdom. Validation of a granted European patent in a given member state would lead to the recognition of the European patent as if it were a national patent granted by the national patent office of that state. Simple so far, right?

The complexity in the old system comes from different validation requirements in different member states. Some require a full translation of the granted European patent specification into a local language, some require a translation of the claims, and some require no translation at all. Some require that a local agent be appointed for certain patent holders, e.g., based on the patent holder’s domicile, others require a local address for service be provided, others have no such requirements.

However, most of this complexity can be handled by the patent holder’s agents without the patent holder themselves needing to be aware of it. Knowing whether a local agent needs to be appointed is generally not a factor in the validation decision-making process. While the need for a translation has implications on cost of validation in a given member state, that is about as far as the implications go.

The New Post-Grant Procedure

Under the new procedure, a unitary patent can be obtained based on a granted European patent, in a way that is at least superficially similar to the national validation process. Once a European patent with unitary effect (to give the unitary patent its official title) has been registered, it will provide roughly equivalent protection in a number of countries as that provided by national patents granted by the national patent offices of those countries.

However, that is where the similarities end. The countries in which a unitary patent will have effect depends on the “participating Member States in which the Unified Patent Court has exclusive jurisdiction with regard to European patents with unitary effect at the date of registration”, in other words, in the countries that have ratified the Unified Patent Court Agreement when the unitary patent is granted. At present (March 2023) this includes 17 countries, but there are currently 39 member states of the European Patent Organisation. The number of countries where a unitary patent has effect may eventually increase to 24 (more is technically possible, but at present seems unlikely) but is ultimately limited by the requirement that countries participating in the unitary patent system must be member states of the European Union. This leaves countries like the UK and Switzerland firmly outside of the unitary patent system. The unitary patent, at least in its current form, will never cover all the member states of the European Patent Organisation, so it will always be necessary to use the “old” national validation procedure in at least those member states that are not part of the unitary patent system.

It is also worth noting that, for a single European patent, it will not be possible to obtain both a unitary patent and use the old national validation procedure in a country covered by the unitary patent. For example, since Germany will be covered by a unitary patent, it will not be possible use the national validation procedure in Germany if a unitary patent is requested. It will, however, remain possible to use the national validation procedure in other countries that are not covered by the unitary patent.

During a transitional period of at least seven years (and up to fourteen years), it also will be possible to remove national validations of European patents in the countries that are participating in the unitary patent system from the Unified Patent Court’s jurisdiction. This process is called “opt-out”. Without going into too much detail about opt-out here (many other quality articles have been written on the subject if you need to know more), this means that there is a real decision to be made about whether to continue using the “old” national validation system in all member states for the time being, whether to embrace the new system and obtain a unitary patent, or whether to follow a middle ground somewhere between the two. The question of whether to request a unitary patent or continue with the old system therefore adds a new layer of strategy to the European patent post-grant procedure. Where previously the only question was where the European patent should be enforceable, now patent holders must decide how the European patent should be enforceable.

As well as the shifting and incomplete geographical scope and the new layer of strategy to consider, the new system imposes new time limits on patent holders. The unitary patent procedure has different deadlines compared to the old national validation procedure: national validation generally needs to be completed within three months of grant of the European patent, but a unitary patent must be requested within just one month of the grant of the European patent. The difference in the deadline has presumably been put in place to prevent both the unitary patent and national validation procedures being used in a single country; however, the practical effect of this on patent owners is that many decisions about national validation that could be made closer to the old three-month deadline now need to be made very quickly after grant of the European patent, if not before.

This is further complicated by the requirement to file a full translation of the European patent specification in order to obtain a unitary patent. Due to some quirks in the law, it is possible to use a translation into Spanish or Polish for both the unitary patent and a national validation in those countries, even though Spain and Poland will not be part of the unitary patent system. Thus, if a patent holder knows that they want to use the national validation procedure in Spain, then the cost of preparing a separate translation for the unitary patent can be saved. But since the translation for the unitary patent is due at the one-month deadline for requesting unitary effect, the decision about whether to validate in Spain should be made at that stage as well. The requirement to file a full translation is a transitional provision, but it will be around for at least six years after entry into force of the UPC agreement.

The split between unitary patent and national validation therefore leads to either all decisions about national validation being made much earlier, or the decisions split in two between the unitary patent countries + countries where the translation for national validation can be reused, and other countries.

Conclusion

The introduction of a new option in the European patent post-grant procedure that does not just sit alongside the old national validation procedure, but stomps all over it, undeniably increases the complexity of the new system compared to the old. While some of the complicating factors, such as opt-outs and translation requirements, will eventually disappear once the transitional provisions drop off, others, such as the incomplete geographical scope of the unitary patent, are here to stay. Especially during this transitional period, it is important for patent holders to pay attention to the new procedure and seek the advice of trusted European Patent Attorneys to help navigate the added complexity.

 This article is originally published in Lexology.