Out-Law Guide | 04 Aug 2022 | 3:50 pm |
The new European patent with unitary effect, or ‘unitary patent’ (UP), will provide businesses with new choices as to how and where to best protect their innovations.
The UP will co-exist with, and be an alternative to, national patents and classic European patents (EPs). It will provide patent protection in every EU country that participates, with a single patent registration, without the need for national validation.
UPs will be enforceable throughout the participating member states in a single action brought before a new court, the Unified Patent Court (UPC).
Businesses will be able to request a UP for any EP granted on or after the date of entry into force of the UPC Agreement (UPCA), which is expected to take place in early 2023.
All EU member states, with the exceptions of Spain, Poland and Croatia, are expected to participate in the new UP and UPC system.
At the time the final preparatory steps for the new court commenced in early 2022 – a phase known as the UPC provisional application phase (PAP) – the UPCA had been signed and fully ratified by 16 member states: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Germany is expected to deposit its instrument of ratification of the UPCA in late 2022, which will trigger the countdown to the opening of the new system. This means that at the outset, a UP is expected to cover at least 17 EU member states. Once granted, the scope of a UP will be fixed to those states that have ratified at that time. The geographic coverage of those patents cannot be expanded.
As time passes more countries are expected to ratify the UPCA, and the geographic scope of later-granted UPs is therefore expected to be wider. Ireland, for example, is expected to participate at a later stage, and some other countries, such as the Czech Republic, have indicated that they will wait until the system has been up and running for a period of time before deciding whether, or when, to ratify. This means that there are likely to be UPs of varying coverage depending on when they were granted.
Some EU member states, notably Spain and Poland, will not participate in the system. Croatia was not part of the EU when the underlying legal treaties that provide for the new system were signed. It has indicated that it will not participate in the system at this time but may join at some point in the future.
Only EU member states are eligible to ratify the UPCA. This means that the geographic scope of UP protection will not extend into every country that is party to the European Patent Convention (EPC). This is different to the position with classic EPs that are granted. The UP will not extend to countries such as Norway, Switzerland and the UK, which withdrew from the system following Brexit, as a result. To obtain coverage in other EPC countries, such as the UK, patentees will still need to validate EPs nationally in those jurisdictions.
Once the new UP and UPC system begins to operate, patent applicants will have greater choice over the way they seek protection for inventions across Europe. They can choose the classic EP route with multiple national validations, or the UP route, which in reality would be obtaining a UP – i.e. a single designation covering all of the UP-contracting states – plus classic EPs for any non-UP contracting countries, such as the UK and Spain. Both routes will still be through the European Patent Office (EPO).
To obtain a UP, the proprietor must apply using the existing application procedure for a classic EP. The EP application must proceed to grant with the same set of claims for all participating member states. The applicant must file a "request for unitary effect".
In addition, applicants must meet language requirements. UPs that are granted need to be translated into English if the original application to the EPO was in French or German. If the original application was in English, the UP must be translated into any other official language of an EU member state. All translations must be submitted at the EPO no later than one month after the grant of the UP is disclosed in the European Patent Bulletin. This deadline cannot be extended.
Once the unitary effect is established, it is fixed for the lifetime of the patent – unlike with classic EPs, it will no longer be possible for UP holders to drop certain country designations.
The UP proprietor will have to pay a single annual renewal fee to the EPO, payable in euros only, under a single legal framework that governs deadlines. The renewal fees have been set at a business-friendly level, corresponding to the combined renewal fees due in the four countries where European patents were most often validated in 2015 – Germany, France, the Netherlands and the UK. Even though the UK will no longer take part in the new system, it has been decided not to depart from the previously agreed fees.
To encourage early uptake of the UP, the EPO has introduced two transitional measures for EP applications for which an ‘intention to grant’ has been issued. Such notices are issued when a patent application is in the final stages of the grant procedure. These transitional measures will come into effect during a “sunrise period”, which will last at least three months before the start of the system – i.e. after Germany deposits its instrument of ratification of the UPCA..
The first transitional measure will allow applicants to file an early request for unitary effect in the sunrise period, which will allow the EPO to register unitary effect immediately the new system begins to operate.
The second measure will permit applicants to request that grant is delayed until after the start of the UP system, to allow a UP to be obtained.
A UP is subject to the exclusive jurisdiction of the UPC. It cannot be opted out.