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. It’s likely that the court will open its doors in March 2023, at which point 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.
A unitary patent is a single patent that has effect in multiple European Union member states. At the moment, 16 EU member states are participating in the system and a 17th, Germany, will be on board before the unitary patent becomes available.
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 not currently participating in the system.
The unitary patent is not available yet, but the planned start date for the new unitary patent and Unified Patent Court system is 1 April 2023.
The Unified Patent Court, which is a new European court with jurisdiction over unitary patents, entered its provisional application phase in January 2022. This means that the steps needed before the system can start running – such as hiring judges and other staff – can now take place.
The next phase, the final countdown to launch of the unitary patent system, will begin when Germany takes the formal step of depositing its ratification of the UPC Agreement with the European Council. At this point some of the transitional provisions described below will come into effect. We expect this to take place in the December 2022.
The EU member states that are currently participating the UP system are:
While Germany has not yet officially joined the system, it will do so before the UP system begins, bringing the current total participating countries to 17.
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 have signed up the UP system.
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. Once the system is up and running, it will be possible to file 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.
During a sunrise period, which is expected to begin three months before the official start of the new UP system, it will be possible to file an early request for unitary effect with the European Patent Office. The early request must be made after a communication indicating that the EPO intends to grant a patent has been issued but before the text intended for grant has been approved. In this case, the EPO will delay grant of the European patent until the UP system officially starts, enabling a unitary patent to be obtained.
For the time being, it may be possible to delay grant of European patent until it’s possible to file an (early) request for unitary effect by drawing out the grant process. It should be relatively straightforward to delay approval of the text intended for grant until at least 12 months have passed since a communication indicating the EPO’s intention to grant was first issued. This should be long enough to reach the sunrise period and file an early request for unitary effect.
As mentioned above, 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. 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 may therefore be some advantage to filing a European patent application in a language other than English, French or German, but this should be carefully balanced against the potential for translation errors to be introduced, which could affect the scope or validity of a granted patent.
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.
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.
Finally, there remain outstanding questions about the overall legality of the UP system within the framework of EU and national law of the member states, including issues around the departure of the UK from the UP system when it left the EU. It seems unlikely that any of these issues will fully derail or cause the collapse of the UP system, but if there is even a small possibility of such an outcome, the consequences and therefore the risks associated with it are unknown.
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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