Unitary Patent (EU)

The new Unitary Patent System

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 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 publication of the grant of the patent.

 

The 25 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 nature, so it can be renewed by paying a single fee to the European Patent Office, unlike the fact that, with the current system, to keep the patent in force you must pay different rates in the offices where it has been validated. 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, for example, Switzerland, the 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 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 validating their patent by the traditional route, even in those EU countries that do participate in the new system.

 

La conveniencia o no de solicitar el efecto unitario vendrá determinado, entre otros aspectos, por el tipo y número de países donde haya interés real en obtener protección. Así, por ejemplo, si la mayoría de los países donde el titular desea obtener protección no participa en el nuevo sistema, una opción sería prescindir del efecto unitario y elegir la vía clásica de validación. No obstante, si al menos cuatro de los países donde el titular desea obtener protección participante del nuevo sistema, en principio resultará atractivo solicitar el efecto unitario para ahorrar en costes de validación y renovación en estos países. Aun así, antes de tomar una decisión será necesario valorar el riesgo de que la patente pueda ser anulada de forma rápida en estos países si recibe una acción centralizada de nulidad en el Tribunal Unificado de Patentes.

 

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.

However, 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 without unitary effect by the classic route 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 – of the jurisdiction of the Unified Patent Court.

The owner of a portfolio of classic European patent applications and patents without unitary effect may exclude (opt-out) part or all the patent portfolio from the jurisdiction of the Unified Patent Court. In fact, you can do so even three months before the new system comes into force (Sunrise period), to avoid the risk of receiving centralized nullity 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 annulment 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 claim, with effect in all EU countries. participants who have ratified the Agreement at the date of grant of the patent.

The possibility of requesting exclusion will be extended for a transitional period of seven years, with the option of extending it for another seven years, but it will only be available for European patent applications in process or European patents that have been validated without unitary effect. Once this transition period has ended, all European applications and patents for which the Opt-out has not been made will remain under the jurisdiction of the Unified Patent Court in the participating EU countries where it takes effect.

 

A new scenario that is yet to come

The final period of preparation of the 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. 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 is expected for the beginning of 2023.

The entry onto the scene of the new European patent system with unitary effect will force the holders of European applications and patents to make decisions shortly about:

  • Request or not the unitary effect of their European patents after receiving the grant, and
  • Whether or not to exclude from the jurisdiction of the Unified Patent Court pending European patent applications and classic European patents validated without unitary effect.

 

 

Map indicating the 17 states in enhanced cooperation that have ratified the Agreements

Members of