After decades of development, the “sunrise period” of the Unified Patent Court Agreement (UPCA) started on March 1, 2023, followed by the entry into force of the UPCA on June 1, 2023.
The European patent with unitary effect (unitary patent) will also be available from June 1, 2023. This is inextricably linked to the establishment of the Unified Patent Court.
Background
For the registration of a trademark or a design, there has long been the option of a national or European application. At European level, this is done centrally at the EUIPO (European Union Intellectual Property Office) in Alicante, Spain. The advantages in terms of administration and central jurisdiction are obvious and have proven themselves in practice.
To date, there is no such uniform European property right for technical property rights/patents. Although the European Patent Office (EPO) exists, it is only responsible for granting European patent applications which, once granted, are treated like individual national patents which are selected (“validated”) by the patent proprietor. This is also referred to as a bundle patent.
This means that there is currently no uniform European jurisdiction for patents. In the event of a patent infringement, these may have to be enforced individually in each country. If a so-called bundle patent contains, for example, 5 European countries, up to 5 different patent infringement proceedings would have to be initiated.
Advantages of the unitary patent:
- It is an additional third option alongside the existing traditional European patents and national patents.
- It is currently possible to obtain patent protection in 17 EU member states with a single application to the EPO. This is the application for uniform effect.
- There is no need to submit national translations, only a transitional period of min. 6 years the submission of a further (often English) full text translation.
- The annual fees are paid centrally (to the EPO). As a rule of thumb, the Unitary Patent is more cost-effective than the conventional European patent if the patent is to be validated in more than four participating states.
- For plaintiffs: A unitary patent can be enforced in a single infringement proceeding. It is heard centrally before the Unified Patent Court (UPC). The decision can be enforced in all participating countries (see below).
Disadvantages of the unitary patent:
- In contrast to the European bundle patent, it is not possible to let patent protection expire country by country.
- The costs of the unitary patent are higher than those of a conventional bundle patent, which is only validated in a few participating countries.
- The UPC decides on the legal status in uniform nullity proceedings. If the patent is challenged, it can be “brought down” in a single procedure for all countries involved.
Which countries are involved?
17 countries have ratified the Agreement on Unitary Patent Protection and have been involved from the start:
Germany, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.
25 countries participate in the enhanced cooperation on unitary patent protection. A unitary patent is expected to be available here in the future:
Germany, Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden.
39 countries are members of the European Patent Organization and have signed the European Patent Convention (EPC):
All 25 states listed above plus:
Albania, Switzerland, Spain, United Kingdom, Croatia, Iceland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, Serbia, San Marino, Turkey.
Source: www.epo.org/applying/european/unitary/unitary-patent_de.html
In countries that are not members of the European Union or that do not participate in enhanced cooperation, only national patents and conventional European bundle patents will continue to be available in the future. These are: Albania, Switzerland, Iceland, Croatia, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, Serbia, Spain, San Marino, Turkey and the United Kingdom.
The geographical scope of a particular Unitary Patent remains the same throughout its lifetime and cannot be extended to states which ratify the UPCA only after the registration of the unitary effect.
Summary of the three ways to obtain patent protection in Europe and their possible combinations:
The Unitary Patent offers an additional option for patent protection in Europe alongside the national route and the classic European patent. Applicants who prefer to obtain protection in individual EPC contracting states can continue to file patent applications with the national offices of these states. It is also possible to validate a European patent in individual EPC contracting states.
A Unitary Patent can be combined with a classic European patent: It is possible to register a European patent as a Unitary Patent and have the European patent additionally validated in other EPC contracting states that are not covered by the Unitary Patent. However, it is not possible for an invention to be protected twice by a conventional European patent and a unitary patent in the countries covered by the unitary patent.
A unitary patent can be combined with a national patent of the same name: There is no so-called “double protection prohibition” here.
Conclusion
After many years of preparation, the Unified Patent Court will commence its work on June 1, 2023. At the same time, it will be possible to apply for a European patent with unitary effect, initially for 17 EU member states. A newly created European court system thus joins the familiar national patent jurisdiction.
Overall, there is additional scope for strategic decisions when applying for patents. Questions will arise here, especially in the early days, and we will be happy to answer them. We will monitor developments on the unitary patent and the Unified Patent Court in practice.
