The European Patent, established under the 1973 Munich Convention, provides for a centralized patent granting procedure in most European countries (currently 41). However, after grant, a European Patent has to be validated in each of the countries in which protection is sought, which makes obtaining a patent in the European Union very expensive and complex, for the following reasons:
- In each country concerned, a translation into the national language has to be submitted, usually through a National Agent, which substantially increases validation costs, although the London Agreement has led to a considerable reduction in some countries.
- Annuities have to be paid in each State, with very different costs, which together represent a substantial annual disbursement.
- Certain formalities (transfers, licenses, etc.) must also be registered separately in each State.
The creation of a Community Patent has finally not been possible. Its main stumbling block was the language regime, since some States, including Spain and Italy, argued that the Community Patent should be translated into other official languages of the EU.
Finally, an alternative system was created, the so called: Unitary European Patent, or as the European Parliament calls it in the approved Regulations: European Patent with unitary effect, which was adopted by means of the «enhanced cooperation» mechanism. This mechanism of cooperation between some (not all) Member States of the Union is triggered when it is concluded that the objectives pursued by such cooperation cannot be achieved within a reasonable period of time by the European Union as a whole. At least 9 Member States must participate in order to set up this mechanism.
As a result of an enhanced cooperation process that 25 States have finally joined, with only Spain and Italy remaining outside, the Commission adopts two proposals for Regulations for the creation of the Unitary European Patent and its language regime, as well as an International Agreement establishing the Unified Patent Court, which were approved by the European Parliament in the session of 11/December/2012.
These Regulations were expected to enter into force on 1/January/2014, or at the latest on the date of entry into force of the Agreement on a Unified Patent Court, if later. However in these 8 years there have been several vicissitudes that have been modifying the situation, the most significant ones: the exit of Great Britain from the EU, the ratification by Italy, the contestation to the respective Constitutional Courts of Hungary and Germany, … The signature of Austria on 18/01/2022 completes the list of 13 signatory states required for the entry into force of the Protocol of Provisional Application.
Features of the European Patent with unitary effect or Unitary European Patent
- It has a unitary character in all participating Member States and therefore the same effects in all of them, so that it can only be limited, transferred, revoked or terminated with respect to all of these Member States.
- It constitutes a specific category of European Patent, therefore it will be the European Patent Office the one in charge of processing and resolving the European Patent applications and, once granted, of:
- Manage the request for unitary effect.
- Publish the translations during the transitional period.
- The choice of this route is optional and may coexist with that of national and European patents. Consequently, once a European Patent has been granted, you may choose to:
- As at present: validate the European Patent in certain EPC Contracting States, whether or not they are members of the European Union or of the Unitary European Patent.
- A Unitary European Patent for the 25 States that have signed these agreements and validate the European Patent in other contracting States, outside the Unitary Patent, chosen at the applicant’s convenience among the countries that are not part of the European Union, or that have not signed these agreements: Spain and Croatia.
- Since the Unitary European Patent prosecution is carried out as a common European Patent, it will follow the existing rules and will be prosecuted in one of the languages of the procedure (English, French or German), with final translation of the claims into the other two official languages.
- During a transitional period, which will last until «high quality» machine translations are available, the application for unitary effect must be accompanied by a complete translation, which will be published by the EPO:
- to 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 holder will have to provide a full translation into one of the languages of the Member State in which the infringement took place, or in which the offender is domiciled; in addition to a translation into the language of the proceedings of the competent court.
Jurisdictional System for Patent Litigation
In 2012, the European Parliament also approved the jurisdictional system for patent litigation, encouraging States to ratify the Agreement establishing the Unified Patent Court. This Court will have exclusive jurisdiction over legal actions concerning the validity or infringement of a Unitary European Patent and European Patents granted in the Member States. This way, it eliminates the risk of different cases being brought in different States on the same patent, as well as the risk of different judgments on the same case in one or another State.
The Unified Patent Court will consist of different Courts of First Instance, with local, regional and central divisions, the latter based in Paris and Munich, and a Court of Appeal located in Luxembourg.
How does this system affect to European Patent applicants?
The adoption of this unified system clearly favors the interests of the companies, since regardless of the country of the holder, it will be able to opt for this new way that substantially lowers the validation and maintenance costs of granted European Patents. And, when there is no interest in more than a few countries, it will still have the opportunity to validate specifically in those countries.