A unitary patent, or a European patent with unitary effect, will be a 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).
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 will have a unitary character and therefore can be renewed on payment of a single fee to the European Patent Office, unlike under the current 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 will be uniform and will apply equally in all participating EU countries.
The unitary effect will not apply to countries outside the European Union such as Switzerland, United Kingdom, Norway or Turkey. Nor will 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 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 owners wish so, they will 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 will be 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 in principle 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 will have exclusive jurisdiction over the European Patent with unitary effect. This Court will thus 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 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, 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 owner of a portfolio of classical European applications and patents validated without unitary effect may request the exclusion Opt-out from the jurisdiction of the Unified Patent Court for some or all of the patent portfolio from the jurisdiction of the Unified Patent Court. In fact, this can be done even three months before the new system enters into force (sunrise period), to avoid the risk of receiving centralised nullity actions as soon as the system enters into force. 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.
The final preparation period for te new European patent system with unitary effect is already underway and it is expected that when this preparation process is advanced, probably towards the end of the year, Germany will ratify the Unified Patent Court Agreement. Germany’s ratification will start a 3-4 month countdown for the entry into force of the new European patent system with unitary effect, which is expected in early 2023.
The entry onto the scene of the new European patent system with unitary effect will force holders of European applications and patents to make decisions soon about: