After decades of discussion and years of delays, the provisional application period of the Unified Patent Court began in January 2022, setting in motion the final steps necessary for the court to begin operating. The court will open its doors on 1 June 2023. On the same day, the European Patent Office will begin granting unitary patents.
The unitary patent (UP) is a new type of European patent that covers many of the member states of the European Union. The Unified Patent Court (UPC) is a new European patent court that has exclusive jurisdiction over unitary patents and, by default, also has jurisdiction over all European patents granted by the European Patent Office.
As a full-service IP firm with experienced patent attorneys and litigators under one roof, Berggren is strongly positioned to help our clients to both protect their inventions and enforce their patents across Europe in the new UP system.
Given the imminent start of the Unified Patent Court, the clock is now ticking for applicants to decide whether to opt-out of the UP system, to enthusiastically participate, or to find a suitable middle-ground. Our patent attorneys and lawyers are available to discuss UP strategy, the practical implications of the new system, and any other questions that you might have.
While there are many factors to be taken into account when decising whether to obtain a unitary patent or go down the "classic" national validation route, one of the largest factors will be the relative cost of each option.
Our UP cost simulator can help you understand the costs of the new unitary patent compared to classic national validation. It be used to see how the choice of a unitary patent or “classic” national validation of a European patent affects the ongoing and lifetime costs of the patent, both in terms of the grant phase costs and the ongoing renewal fees.
This guide is intended for applicants and owners of European patents, their in-house legal teams, and their local attorneys. After reading this guide, we hope that you will have a clear understanding of what the unitary patent and Unified Patent Court are, and how this new unitary patent system will impact your or your client’s patent rights in Europe.
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With the start of the unitary patent system quickly approaching, it’s essential that patent applicants and owners understand the timeline and the decisions that need to be made over the coming months, as well as the long-reaching implications of those decisions.
Our handy timeline sets out the key points to be considered before the unitary patent system and Unified Patent Court become operational.
A unitary patent is a single patent that has effect in multiple European Union member states. At the moment, 17 EU member states are participating in the system, including Germany, France, the Netherlands, Finland, and Sweden. More EU countries are expected to join the system over the coming months and years.
A unitary patent can be used to prevent third parties from performing infringing acts throughout the participating countries. At the same time, if a unitary patent is found to be invalid, its revocation has effect across all of the participating countries. This contrasts with the existing European patent system in which a granted European patent becomes a “bundle” of entirely separate national rights.
The unitary patent does not replace the existing European patent system – it is a new option as part of the existing system that can itself form part of a bundle of patents, including national patents in countries that are either not an EU member state, such as the UK and Switzerland, or are EU states not currently participating in the system.
The European Patent Office’s transitional measures became available on 1 January 2023 and the Unified Patent Court’s sunrise period began on 1 March 2023. The new system will be fully operational on 1 June 2023.
The EU member states that are currently participating the UP system are:
A unitary patent will have effect in the countries that are participating in the system at the date of registration of the unitary patent, so while the number of participating member states is likely to increase, the geographical coverage of existing unitary patents will not.
All current EU member states except for Spain, Croatia and Poland are expected to join the UP system in the coming months and years.
The current participating EU member states, non-participating EU member states, and non-EU states can be seen on a map on the EPO website.
Unitary patents will be granted by the European Patent Office (EPO) after the normal examination and grant process for European patents. This will be done by filing a “request for unitary effect” with the EPO within a month of grant of the European patent. In practice this means that the process for obtaining a unitary patent can be seen as a new option as part of the existing national validation process.
During a transitional period of at least six years, which may be extended up to 12 years, a full translation of the European patent specification must be filed. If the language of the EPO proceedings was French or German, the specification must be translated into English. If the language of the EPO proceedings was English, then the specification can be translated into any other official language of an EU member state.
Renewal fees will be payable for unitary patents, just like the existing national rights that they may replace. The level of the renewal fees is roughly equal to the cost of the combined renewal fees in the four most-commonly validated countries: Germany, France, Netherlands, and Italy. As a result, the renewal fees payable for a unitary patent are likely to be lower when the proprietor would have validated their European patent in five or more of the participating countries in the absence of the system.
Despite the apparent cost savings associated with unitary patent renewal fees, if a unitary patent is obtained it will not be possible to reduce the renewal fee burden by dropping some national rights and leaving others in place. The unitary patent renewal fees are themselves unitary, set at a fixed level based only on the number of years since filing, not on the number of countries in which continued protection is needed. If the ostensibly lower renewal fee is the primary motivator for obtaining a unitary patent, it should therefore be carefully considered whether or not the overall cost will actually be lower.
After the transitional period, during which a full translation of the European patent specification will be required, it will not be necessary to file any translations in order to obtain a unitary patent. This is a stark contrast the current national validation system for obtaining a bundle of national patents, where translations of some or all of the specification into local languages may be required in different countries. In many cases, the cost of obtaining a unitary patent compared to the cost of national validation is therefore likely to be significantly lower. However, the calculation depends on which countries would be chosen for national validation in the absence of a unitary patent, since many countries, including France and Germany, do not require translations to be filed as part of the classic national validation process.
To get a better idea of the costs of a unitary patent compared to national validation, you can explore different options and scenarios using our UP cost simulator.
As of 1 January 2023, it has been possible to file requests for unitary effect with the European Patent Office and to delay grant of European patents until 1 June so that a unitary patent can be obtained.
Furthermore, during a transitional period of at least six years a full translation of the European patent specification must be filed. If the language of the EPO proceedings was French or German, the specification must be translated into English. If the language of the EPO proceedings was English, then the specification can be translated into any other official language of an EU member state.
In practice, it may be possible to reuse an existing translation, such as one prepared for national validation in a country not participating in the UP system or one prepared for filing elsewhere in the world, for the unitary patent translation. In this case there may be no or only a small additional cost associated with the unitary patent translation.
For SMEs, non-profits, universities, public research organisations and individual applicants, a compensation scheme will be available to cover some or all of the costs of a translation up to 500 €. To be eligible, the proprietor must reside or have their principal place of business in an EU member state and must have filed the European patent application in an official EU language other than English, French or German.
There are many potential advantages and disadvantages associated with the unitary patent and Unified Patent Court (UPC), which will have exclusive jurisdiction over infringement and invalidity disputes for unitary patents.
While the costs associated with unitary patents appear, on the surface, to be favourable compared to large bundles of national patents, the reality needs to be carefully assessed based on the reduced flexibility of the unitary patent renewal fees and the likelihood that individual national patents would be dropped later in their terms when the renewal fees steeply increase.
The UPC will be a single forum in which enforcement and revocation actions related to a unitary patent will be handled and ultimately decided with effect across all of the participating countries that the unitary patent covers. The single forum may help to avoid parallel litigation across many of the EU’s largest member states, and therefore avoid the multiplication of costs associated with multiple cases being litigated in parallel. However, given the enhanced scope for both central enforcement and central revocation, the costs associated with a UPC action may well end up being higher than in any individual national court. Furthermore, central revocation of a granted patent is a significant risk for proprietors.
Finally, at least at the start of the court, the UPC will be untried and untested and so the outcomes of cases may be quite unpredictable. Nevertheless, the UPC will attract many highly qualified technical judges and offer a relatively fast procedure, which in the long run will likely lead to consistency and reduced uncertainty.
The new unitary patent system will have serious consequences for Finnish companies' freedom to operate both in Finland and abroad. As the unitary patent system rolls out, there will be many more foreign-owned patents in force in Finland than there have been until now.
The Unified Patent Court will, by default, have jurisdiction over all European Patents granted by the European Patent Office (specifically the nationally validated patents in those countries participating in the UP/UPC system) including those that have already been granted as well as those that will be granted in the future.
A new referral to the European Patent Office’s Enlarged Board of Appeal has the potential to affect the validity of priority claims made in huge numbers of Euro-PCT applications filed by US-based corporate or institutional applicants before the America Invents Act came into effect.
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