✍🏻 The European Patent with Unitary Effect (UP) and the Unified Patent Court (UPC) will come into force on June 1, 2023.
– In short, a Unitary European Patent (UP) constitutes a unified system for validating a European patent in the participating Member States, with the same effects in all of them. Therefore, a UP constitutes a specific category of European patent, the processing and resolution of which is the responsibility of the European Patent Office, which, once granted and unitary effect has been requested for it, will be in charge of:
– Manage the request for unitary effect.
– Publish the necessary translations during the transitional period.
– Collect and record the payments of the Annuities.
The choice of this route is optional and will coexist with the European patents validated in the different Member States of the Munich Convention on the Grant of European Patents (EPC). Consequently, once a European patent has been granted, it will be possible to choose to:
– As at present: validate it in certain contracting States of the EPC, whether or not they are members of the European Union, or of the unitary European patent.
– Apply for unitary effect in the States that have signed the UP agreement and validate the European patent in other contracting States of the EPC, outside the unitary patent, chosen at the convenience of the applicant among the States that are not part of the European Union, or that have not signed these agreements, such as Spain, Poland or Croatia.
Since the prosecution of a unitary European patent is handled as a common European patent, it will follow the existing rules and will be prosecuted in one of the languages of the proceedings (English, French or German), with final translation of the claims into the other two official languages. However, during a transitional period, the application for unitary effect must be accompanied by a full translation of the description, which will be published by the EPO:
– into English, if the language of proceedings before the EPO is German or French, or
– into another official language of the Member States and of the Union, if the language of proceedings before the EPO is English.
After the transitional period, no translation will be required, except in the case of litigation, where the owner will have to provide a full translation into one of the languages of the Member State where the infringement took place, or where the infringer is domiciled; in addition to a translation into the language of the proceedings of the competent Court.
Jurisdictional System for Patent Litigation
The Unitary European Patent (UP) is closely linked to the Unified Patent Court (UPC), since this Court will have exclusive jurisdiction over legal actions concerning the validity or infringement of unitary European patents, but also over European patents granted in the Member States of the unitary system, in order to eliminate the risk of different cases being brought in different States on the same patent, and that there may be different rulings on the same litigation case in one or another State.
The UPC will consist of Courts of First Instance, with local, regional and central divisions. The local and regional divisions will be located in the contracting member states that so request. The Central Division will have its main seat in Paris and a section in Munich. In general terms, the local and regional divisions will mainly deal with patent infringement cases and the Central Division will deal with validity cases.
In order to clarify those doubts that have arisen about the Unitary European Patent (UP) system, we have come up with a series of questions and answers on some of the issues that we consider to be of interest:
What are the advantages of the unitary European patent system?
1️⃣ This new way simplifies the protection of a patent in the European Union, since with a single procedure a European patent can be validated in up to 24 States belonging to the EU, obtaining the same effects in all of them.
2️⃣ This validation is a simple procedure, which will only consist of a communication to the European Patent Office of the desire to benefit from the unitary effect of a granted European patent, within 1 month from the publication of its grant.
3️⃣ Saves translation costs since only the translation into another language will be required and during a transitional period.
4️⃣ It will only be necessary to pay a single annuity to keep it in force in all the States included in this unitary system.
Disadvantages of the unitary European patent?
– The protection granted by a unitary European patent is uniform and therefore can only be limited, transferred, revoked or terminated in respect of all Member States, which can be a disadvantage when it comes to, for example, abandoning the patent in a number of States and maintaining it in others, as happens in the current system of national validations, since this will not be possible in the case of a UP.
– The Unitary European Patent (UP) is linked to the Unified Patent Court (UPC) and is therefore subject to invalidity actions before this Court, during the entire life of the patent and, as invalidation would have consequences for all States, in certain cases it will be advisable to force the potential competitor to litigate State by State if it intends to obtain the invalidation of our patent, in which case the path of the unitary patent should not have been chosen.
– Economically it is possible that in certain cases it is not worthwhile to resort to this system, in order for it to be cost-effective, you should be interested in protecting your patent in at least 4 of the countries included in the unitary European patent at any given time.
Who can apply for a European patent with unitary effect?
The UP can be requested by any holder of a granted European patent, either from a member state of the Union, or from any country. For example, a Spanish holder can request a patent with unitary effect, even though Spain is not part of the system.
Likewise, a European Patent Attorney can also represent any applicant who wants to use this system, even if his State is not part of the unitary European patent, as is the case of Spanish, English or Norwegian European Patent Attorneys.
When does the patent with unitary effect and the Unified Patent Court enter into force?
The European patent with unitary effect and the Unified Court will enter into force on June 1, 2023, once Germany has ratified the agreement, thus allowing the implementation of the mechanism as one of the essential states.
However, from March 1, 2023, the sunrise period begins so that patentees can prepare themselves by implementing a series of transitional measures, such as requesting to bring forward or delay the request for unitary effect before the entry into force of the unitary patent system, or delaying the grant of the European patent so that it is published once the unitary patent enters into force and, thus, can request this unitary effect for that invention.
Will existing European patents be affected?
Once the Unified Patent Court (UPC) agreement comes into force, it will apply to any European patent with unitary effect, but also to European patents granted and validated in the classical way and to pending European patent applications.
As it will also affect European patents granted by the EPO prior to the entry into force of this system, an invalidation action before this Court against a successful European patent would result in its invalidation in all countries adhering to the system. To prevent this from happening, holders of European patents already granted, who have their patent in force in any of the countries participating in the system, will have the possibility of filing, during a transitional period of seven years (extendable for another seven years) after the entry into force of the Agreement, an exemption with respect to the TUP. For this purpose, the Secretariat of the Tribunal must be notified, at the latest one month before the date of termination of the transitional period, of its wish to be exempted from its jurisdiction. This exemption will only be available if an action has not already been brought before the UPC.
How to obtain a European patent with unitary effect?
Before the EPO can register a unitary patent, the applicant must obtain a European patent. Therefore, the European patent application must be filed and processed under the European Patent Convention (EPC) in the same way as at present.
Once the European patent has been granted, the holder has a period of one month from the date of publication of the mention of the grant in the European Patent Bulletin to file a «request for unitary effect» with the EPO to obtain a unitary patent.
Cost of a unitary patent
The costs of a unitary patent will be the same as for a European patent until the grant, since the procedure starts with the application for the European patent in both cases. However, once the European patent is granted, the cost will be lower, since with a single translation, protection can be acquired in all member states of the agreement, unlike the classic validation that has to be done on a country-by-country basis.
The cost of maintenance of the patent is also reduced, since only one single annuity will be paid to maintain the unitary patent in all the States participating in this unitary system.
It must be taken into account that the unitary patent will have no value in the States that have not ratified this agreement and neither in the States that are not members of the European Union, in which, if you wish to obtain protection for a European patent once granted, you will have to validate it in these States within the established term (3 months from the grant). In this case, the registration will have to be done by combining several options such as, for example, national validation of the European patent in several countries and simultaneously the unitary patent.
Does a unitary European patent cover the same states?
The number of member states of the unitary patent will increase over time. Therefore, the territorial scope of unitary patents will be different depending on when they are registered. At present, this system starts with 17 countries and is expected to eventually cover 24 of the 27 EU member states.
Countries initially included in the unitary European patent:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden and Slovenia.
Countries expected to join the unitary European patent soon:
Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia and Slovakia.
Countries that will not be joining the unitary European patent in the short term:
Croatia, Spain and Poland
Can the unitary character be waived and a UP be broken down into States?
No, once the unitary character has been acquired, the patent must maintain it for the duration of its validity and therefore it is not possible to abandon a number of States in order to pay less, as is the case when national validations are carried out in several States.
Is double protection possible?
Participating Member States are obliged to take measures to ensure that, where the unitary effect of a European patent has been registered and extends to their territory, the European patent is deemed not to have taken effect as a national patent in their territory.
How does this system affect European Patent applicants?
The adoption of this unified system clearly favors the interests of large companies, since regardless of the State of the holder, they will be able to opt for this new way that substantially reduces the cost of validation and maintenance of granted European patents. However, for those companies that are only interested in a few States, the option of traditional validations continues to offer an alternative that is not only valid, but also probably more flexible and profitable in the long term.
From our point of view, the time elapsed since it was initiated, back in 2012, this system has lost some interest, among other reasons because three of the large European economies: Great Britain, Spain and Poland, have been left out of this system and therefore in those countries it is necessary to continue doing the traditional validation, if you want to have valid European patent rights in them, once the application has been granted by the EPO.