Unitary Patent (EU)
The new Unitary Patent System
A unitary patent, or a European patent with unitary effect, is an European patent granted by the European Patent Office for which, after its granting, its owner has requested unitary effect through a single validation procedure, hereinafter validation with unitary effect, in those countries of the European Union that participate in the system and have ratified the Agreement for the Unified Patent Court on the date of registration of the unitary effect at the European Patent Office (EPO). This system has entered into force on 1 June 2023.
The 25 European Union states participating in the enhanced cooperation to achieve the Unitary Patent system are: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg , Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden.
In these countries, the European patent have a unitary character and therefore can be renewed on payment of a single fee to the European Patent Office, unlike under the previous system, where different fees must be paid at the offices where the patent has been validated in order to keep the patent in force. In addition, the protection conferred by the European patent with unitary effect is uniform and applies equally in all participating EU countries.
The unitary effect does not apply to countries outside the European Union such as Switzerland, United Kingdom, Norway or Turkey. Nor it apply to countries that are part of the European Union, such as Spain, Croatia and Poland, but have not agreed to participate or have not ratified the Unified Patent Court Agreement.
However, in these countries the holder of the same European patent is 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 coexists in parallel with the system that has been on until now, so that, if the owners wish so, they are be able to continue validating their patent by the classical route, even in those EU countries that do participate in the new system.
Whether or not to apply for validation with unitary effect is determined, among other things, 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 not to validate with unitary effect and choose the classical route of validation. However, if at least four of the countries where the holder wishes to obtain protection participate in the new system, it would be attractive to apply for validation with unitary effect to save on validation and renewal costs in these countries. However, before deciding, it may be necessary to assess the risk that the patent could be quickly invalidated in these countries if it receives a centralised invalidity action in the Unified Patent Court.
The Unified Patent Court
The Unified Patent Court has exclusive jurisdiction over the European Patent with unitary effect. This Court decides in a centralized and rapid manner on the validity and infringement of the patent, and its decisions are directly applicable in all the countries where the European patent has been validated with the patent has unitary effect.
However, the Agreement for the Unitary Patent foresees that the Unified Patent Court will eventually have exclusive jurisdiction not only over European Patents with unitary effect, but also over pending applications and European patents validated without unitary effect in the classical way of the current system. In fact, from 9 of June, 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 owner of a portfolio of classical European applications and patents validated without unitary effect can apply for an opt-out from the jurisdiction of the Unified Patent Court for part or all of the patent portfolio. The decision to opt-out may be appropriate, particularly when it is known that the competitors are active in litigation and that the outcome of an eventual invalidity may end up having an effect in key countries for the business. Subsequently, the owner will have a one time opportunity 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 centralised infringement action, with effect in all participating EU countries that had ratified the Agreement on the date of registration of the request for withdrawal of the Opt-out exclusion.
The possibility to request Opt-out will be extended for a transitional period of seven years, with an option to extend it for a further seven years but it will only be available for European patent applications in process or European patents that have been validated without unitary effect. At the end of this transitional period, all European patent applications and patents for which te opt-out has been made will fall under the jurisdiction of the Unified Patent Court in the participating EU countries where it takes effect.
A new scenario
The final preparation period has been completed and the Unified Patent Court has been launched, which now deals with the validity and infringement of patents in all Member States involved in the European Patent Convention and the new unitary EU patent.
The entry onto the scene of the new European patent system with unitary effect forces holders of European applications and patents to make decisions about:
- Whether or not to apply for unitary effect of their European patents after grant.
- Whether or not to request the Opt out from the jurisdiction of the Unified Patent Court for pending European patent applications and classical European patents validated without unitary effect.