An additional option to obtain protection in Europe
This month of January the final period of preparation of the new European patent system with unitary effect has begun and it is expected that, when this preparation process is advanced, probably towards the end of the year, Germany will ratify the Agreement of the Unified Patent Court (Unitary Patent Court Agreement). With the ratification of Germany, a countdown of 3-4 months will begin for the entry into force of the new European patent system with unitary effect, which will probably take place at the beginning of 2023.
The new Unitary Patent system
The current system requires that, after grant, the European patent be validated at the national level in those countries of the European Patent Convention in which the owner wishes to obtain protection. In this way, with the current system, the European patent becomes a set of national rights that must be renewed and litigated at the national level in each of the countries where it has been validated. The new European patent system with unitary effect will allow the owner to request, through a single validation procedure, the unitary effect of his patent in those countries of the European Union (EU) that participate in the system and have ratified the Agreement for the Unified Patent Court on the date of publication of the grant of the patent. In these countries, the European patent will have a unitary character, so it can be renewed by paying a single fee to the European Patent Office (with the current system, to keep the patent in force, fees must be paid in the different national offices where the patent has been validated). In addition, the protection conferred by the European patent with unitary effect will be uniform and will apply equally to all the participating EU countries (with the current system, the rights provided by the patent must be litigated at the national level in the different countries where it has been validated).
The unit effect does not apply to countries outside the European Union such as, for example, Switzerland, the United Kingdom, Norway or Turkey. Nor does it apply to countries that are part of the European Union, such as Spain, Croatia and Poland, but have not agreed to participate in the system. However, in these countries the holder of the same European patent will be able to use the classical route of validation at the national level to obtain protection. In fact, it is important to note that the new system will coexist in parallel with the current system, so that, if the owner so wishes, they can continue to validate their patent through the traditional route, even in those EU countries that do participate in the new system.
The Unified Patent Court
The Unified Patent Court will have exclusive jurisdiction over the European Patent with unitary effect. Thus, this Court will decide in a centralized and rapid manner on the validity and infringement of the patent, and its decisions will be directly applicable in all the countries where the patent has unitary effect.
The Agreement for the unitary patent foresees that the Unified Patent Court will end up having exclusive jurisdiction not only over European Patents with unitary effect but also over pending applications and European patents validated by the classic route of the current system without unitary effect. In fact, on the date of entry into force of the new system, all existing European applications and patents will de facto fall under the shared jurisdiction of the Unified Patent Court and the national courts, unless the owner actively requests the exclusion – Opt-Out mechanism – from the jurisdiction of the Unified Patent Court. The possibility of requesting exclusion will be extended for a transitional period of seven years, with an option to extend it for another seven years, but it will only be available for European applications or patents that have been validated without unitary effect. Once this transitional period is over, all European applications and patents for which the Opt-out has not been made will come under the jurisdiction of the Unified Patent Court in the participating EU countries where it has effect.
A new scenario that requires decision making
The entry on the scene of the new European patent system with unitary effect provides an additional option to obtain protection in Europe that will force the holders of European applications and patents to make decisions in the near future about;
- Request or not the unitary effect of their patents after grant,
- Whether or not to exclude from the jurisdiction of the Unified Patent Court applications and classic European patents validated without unitary effect.
The convenience or not of requesting the unitary effect will be determined, among other aspects, by the type and number of countries where there is a real interest in obtaining protection. Thus, for example, if most of the countries where the holder wishes to obtain protection do not participate in the new system, one option would be to dispense with the unitary effect and choose the classic validation route. However, if at least four of the countries where the holder wishes to obtain protection participate in the new system, in principle it will be attractive to apply for the unitary effect to save on validation and renewal costs in these countries. Even so, before making a decision, it may be necessary to assess the risk that the patent may be quickly revoked in these countries if it receives a centralized revocation action at the Unified Patent Court.
The holder of a portfolio of classic European applications and patents without unitary effect may decide to exclude part or all the patent portfolio from the jurisdiction of the Unified Patent Court (Opt Out mechanism). In fact, he can do so even three months before the new system comes into force (Sunrise period) in order to avoid the risk of receiving centralized revocation actions as soon as the system comes into force. The exclusion decision may be correct, particularly when it is known that the competitors are active in litigation and that the result of an eventual revocation action may end up having an effect in key countries for the business. Subsequently, the owner will have the option to recover (Opt in) the jurisdiction of the Unified Patent Court, for example, for those stronger patents with which he may intend to exercise a centralized infringement lawsuit, which would have effect in all EU participating countries that have ratified the Agreement at the date of grant of the patent.
There is no doubt that there are various aspects that must be considered in each case to make the best decision. Getting the advice and analysis of the patent expert is now more than ever necessary to be prepared.