The Unitary Patent and the Unified Patent Court are just around the corner

The Unitary Patent and the Unified Patent Court are just around the corner

A patent with unitary effect throughout the European Union (EU)? This is an old dream that will very soon come true, although it is still incomplete as not all EU Member States have joined the system. The expected date of entry into force is 1 April 2023. Although this date is still a few months away, it is advisable to get ready now, as decisions will soon have to be taken on already granted European Patents and pending European Patent applications.

A bit of history – The European Patent and the dream of the Unitary Patent 

Before the creation of the European Patent in 1973, there was already a desire to create a patent with a single, centralized procedure and unitary effect throughout the European Economic Community (EEC, now part of the EU). The project failed, due to the different political interests between the Member States and the difficulties in obtaining from them the necessary cession of sovereignty on certain aspects, in particular, those relating to the working languages and the competence of national courts in matters of patent invalidity and infringement.

Faced with these seemingly insurmountable difficulties, a more pragmatic approach was chosen, resulting in the signing of the European Patent Convention (EPC) in Munich on 5 October 1973. This created the European Patent and the European Patent Office (EPO) as the single body responsible for processing and granting European Patents. This system, with some adaptations and after successive enlargements with the gradual incorporation of new EPC Member States, is the one currently in operation in Europe. It should be remembered that the EPC is not a mechanism of the European Union as such, but rather a multilateral treaty, in which each of the Member States of the current EU and other European States such as the United Kingdom, Switzerland, Norway, Turkey, etc., participate individually. The EPC currently has 39 Member States (the 27 EU States, plus 12 non-EU States).

The European Patent system has undoubtedly been a major achievement and is the main route for patent registration on the European continent (188,600 European patent applications were filed in 2021).  However, the European Patent is not a title with unitary effect, but a bundle of national patents obtained through a single granting procedure before the EPO. Once a European Patent has been granted by the EPO, the owner must validate and maintain it in force in each Member State where they wants it to have effect. Thus, a European Patent may be in force in some of the EPC Member States and not in others. In practice, as a matter of costs, European Patent owners generally only validate and maintain them in force in a limited number of Member States. Moreover, it is the national courts of the EPC Member States that decide on the validity of a European Patent in the national territory (in case of an invalidity action by a third party) and on patent infringement by a third-party in that national territory (in case of an action by the patent owner or a licensee). And since the decisions of each national court have effects only in the national territory, contradictory situations may arise in different Member States on the invalidity or infringement of the same European Patent.

After the creation of the European Patent in 1973, work continued on the construction of a system which, on the basis of the European Patent, would allow a patent with unitary effects throughout the EU to be obtained. Nevertheless, given the impossibility of reaching an agreement among all the EU Member States and after several decades of negotiations, it was finally decided to move forward by means of an Enhanced Cooperation procedure. This is a procedure authorizing a group of EU Member States to set up an advanced integration or cooperation in a particular field, where it has been established that the EU as a whole cannot achieve the goals of such cooperation within a reasonable period, and allowing the other EU Member States to join at a later stage if they wish to do so.

This is how, through the Enhanced Cooperation, the EU legislative package known as the “Unitary Patent Package” was adopted in 2012 and 2013: Regulation (EU) No 1257/2012 for the creation of the Unitary Patent, Regulation (EU) No. 1260/2012 on translation arrangements and EU Agreement 2013/C 175/01 on the Unified Patent Court.

The implementation of the “Unitary Patent Package” had further difficulties and opposition, in particular an appeal filed by Spain before the European Court of Justice in 2013 and an action brought by a private individual before the German Constitutional Court in 2017. Now that these obstacles have been cleared and both appeals have been rejected by the respective courts, the project continues, and the launch of the Unitary Patent and the Unified Patent Court will soon take place.

When will the Unitary Patent and the Unified Patent Court become operational?

The Unitary Patent and the Unified Patent Court are intended to start on the first day of the fourth month following the deposit by Germany of its instrument of ratification.

Germany is expected to deposit its instrument of ratification in December 2022. Thus, the Unitary Patent and the Unified Patent Court will start on 1 April 2023 (expected date).

Which countries are participating?

So far, 24 EU Member States (all except Spain, Poland and Croatia) have joined the Enhanced Cooperation procedure and have signed all the agreements contained in the “Unitary Patent Package”. However, currently only 17 of them have completed the process by depositing the instrument of ratification (or are about to do so, e.g., Germany).

These 17 States, in which the “Unitary Patent Package” will take effect when it starts on 1 April 2023 (expected date), are the following:

The following 7 Member States have signed all the agreements of the “Unitary Patent Package” but have not completed the full ratification process: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia. In each of these countries, the “Unitary Patent Package” will take effect when the ratification process is completed. There is no certainty that all of them will eventually do so. Some of them, such as Hungary and the Czech Republic, have expressed doubts and others (Ireland) will have to hold a referendum for approval.

Spain, Croatia, and Poland have not signed all the agreements contained in the “Unitary Patent Package” (Poland has signed the agreements relating to the Unitary Patent, but not those relating to the Unified Patent Court, which are necessary for the Unitary Patent to become operational; Spain and Croatia have not signed any of the agreements). These three States may join at a later stage if they decide to sign all the agreements in the package and then, complete the ratification process.

What is the position of Spain?

Spain has been one of the EU Member States most strongly opposed to the project of the Unitary Patent and the Unified Patent Court. The reasons are mainly related to the working languages. Successive Spanish governments have defended that Spanish should be one of the official languages of the system (along with English, German, and French), and that the patents granted by the EPO having effects in Spain should be fully translated into Spanish. On the other hand, there is also an opposition to Spanish courts losing competence over decisions on invalidity and infringement of patents in Spain.

For the time being, there does not seem to be a change of position, so it is likely that Spain will remain outside the system for the next few years.

What about EU Member States that do not participate in the system?

In EU Member States that do not participate in the system, either because they have not yet completed the ratification process or because, as in the case of Spain, they have not signed the agreements, the Unitary Patent will have no legal effect.

However, it will still be possible to validate and maintain in force a European Patent in these States. Indeed, the European Patent as we know it today will remain unchanged for those EU Member States not participating in the “Unitary Patent Package”, and for EPC Member States that are not members of the EU (UK, Switzerland, Norway, Turkey, etc.).

What is the Unitary Patent and how does it relate to the European Patent?

A Unitary Patent is obtained after the grant of a European Patent by the EPO. Thus, the Unitary Patent does not replace the European Patent, but rather complements and integrates it.

The entire system of processing and granting European Patents through the EPO is maintained, and the Unitary Patent is added to the bundle of national patents resulting from the grant of a European Patent. Indeed, once the European Patent has been granted by the EPO, in addition to being possible to validate and maintain it as hitherto selectively in one or more of the EPC Member States, it will be possible for this European Patent granted by the EPO to also become a Unitary Patent, with unitary effect in all the Member States which have signed and ratified the “Unitary Patent Package”.

More specifically, after the grant of a European Patent, the patent owner may optionally apply for a Unitary Patent within a one-month period since the publication of the mention of grant. The owner of the granted European Patent may also choose not to apply for a Unitary Patent and validate the European Patent individually in the States of his/her choice using the “classical” procedure of the European Patent system.

The main features of the Unitary Patent are the following:

Unitary effect. A Unitary Patent has unitary effect in all the EU Member States participating in the system (the States that have signed and ratified the “Unitary Patent Package”). This implies that a Unitary Patent can only be invalidated or limited as a block for all the States participating in the system. Furthermore, a decision on an infringement of a Unitary Patent has effects in all the States of the system. Decisions on invalidity and infringement of a Unitary Patent will be the exclusive competence of the divisions of the Unified Patent Court.

Translations are eliminated. After the grant of a European Patent, no translation will be required for the Unitary Patent derived from this European Patent to be in force in all the States participating in the system. During a transitional period of six years after the system becomes operational and depending on the official language chosen for the prosecution of the patent application at the EPO (English, German or French), a translation will be required for information purposes and without legal effects. More specifically, where the language of the proceedings is French or German, a full translation of the patent into English will have to be filed; where the language of the proceedings is English, a full translation of the patent into any other official EU language will have to be filed.

Single payment of annuities to the EPO. To maintain a Unitary Patent in force in all the States of the system, a single annuity payment will be made to the EPO. It will no longer be necessary to pay annuities to each national patent office.

Centralized administration at the EPO. All post-grant administration will be handled centrally by the EPO. This means that, for example, to register an assignment, a licence or a simple change of name or address, it will no longer be necessary to take any action in each of the patent offices of the States, but only one step at the EPO. In addition, all relevant information on the status of a Unitary Patent will be available to the public in the EPO Register.

What is the Unified Patent Court?

The Unified Patent Court is a newly created international court, common to the EU Member States participating in the system, which will have exclusive competence over Unitary Patents in infringement and invalidity.

The Unified Patent Court will also have competence over European Patents on infringement and invalidity in the EU countries participating in the system (unless the patent owner has used the “opt-out” mechanism to prevent a European Patent from falling under the competence of the Unified Patent Court). For example, if a European Patent is in force in France, Germany, Italy and Spain, the Unified Patent Court will have competence in France, Germany and Italy and its decisions will have unitary effect in these three countries, unless the patent owner has used the “opt-out” mechanism. In no case will the Unified Patent Court have competence in Spain, if Spain remains outside the Unitary Patent system.

Decisions of the Unified Patent Court will have unitary effect in all EU Member States participating in the Unitary Patent system.

The structure of the Unified Patent Court shall be as follows:

A Court of First Instance consisting of a Central Division, based in Paris with at least one section in Munich, and Local and Regional Divisions located in the EU Member States participating in the system. In general, and without going into the details here, the Local and Regional Divisions will deal with infringement actions, while the Central Division will have exclusive competence over actions for declarations of non-infringement and actions for invalidation.

A common Court of Appeal based in Luxembourg.

The divisions of the Unified Patent Court will have a multinational composition and will have legally qualified judges and, as the case may be, also technically qualified judges. Technically qualified judges shall have a university degree and proven expertise in a field of technology. They shall also have proven knowledge of civil law and patent litigation procedures.

How does it affect already granted European Patents and pending European Patent applications? – Transitional period, “sunrise period” and “opt-out”.

The following refers only to European Patents (pending applications and already granted European Patents). It does not refer to Unitary Patents, for which the Unified Patent Court will have exclusive competence in all cases.

General competence of the Unified Patent Court for European Patents

On 1 April 2023 (expected date), the “Unitary Patent Package” will enter into force.

As a general rule and automatically, from this date, the Unified Patent Court will have competence for infringement and invalidity concerning all European Patents, both those granted before this date and those granted thereafter, in all participating EU States.

The Unified Patent Court will not have any competence in non-participating States, where national courts will remain competent.

Transitional period, “sunrise period” and the possibility of removing a European Patent from the competence of the Unified Patent Court (“opt-out”).

A transitional period of 7 years is foreseen, starting from the date of entry into force of the “Unitary Patent Package” (1 April 2023, expected date), during which the competence of the Unified Patent Court for European Patents will not be exclusive and, moreover, can be avoided. More specifically, during the transitional period:

– the national courts of the EU States participating in the system will continue to have competence, together with the Unified Patent Court, for infringement and invalidity of European Patents; and

– the owner of a European Patent may use an “opt-out” mechanism to remove it from the competence of the Unified Patent Court, in which case only the national courts will have competence for this European Patent.

The rules of the opt-out mechanism shall be as follows:

      • Deadline:

an owner of a European Patent may apply for an opt-out at any time from the beginning of the transitional period of 7 years (1 April 2023, expected date) until one month before the end of this period;

they may also apply for an opt-out within a sunrise period of 3 months before the date of entry into force of the “Unitary Patent Package”.

      • Reversibility and blocking:

The owner of a European Patent who has requested an opt-out may withdraw it (“opt-in”) at any time and thus, restore the competence of the Unified Patent Court for that European Patent.

Once an opt-in has been made for a European Patent, it will not be possible to make an opt-out again for the same European Patent. In other words, an opt-in definitively blocks the opt-out.

When an action has been brought before the Unified Patent Court for a European Patent, it will not be possible to opt-out for the same European Patent. In other words, an action before the Unified Patent Court definitively blocks the opt-out.

When an action has been brought before a national court for a European Patent, it will not be possible to perform an opt-in for this same European Patent. In other words, an action before a national court definitively blocks the opt-in.

      • Procedure:

Opt-out and opt-in applications must be filed before the Registry of the Unified Patent Court (not before the EPO).

The graph below shows the above periods and dates, assuming that, as expected, Germany deposits its instrument of ratification in December 2022:

How should applicants and owners of European Patents get ready for the new system?

Opt-out during the sunrise period

During the sunrise period of 3 months, i.e. between 01/01/2023 and 31/03/2023 (expected dates), the owner of a European Patent will be able to file an opt-out to remove it from the competence of the Unified Patent Court. During this period, before the entry into force of the “Unitary Patent Package”, it will not yet be possible to bring actions before the Unified Patent Court. Therefore, during this period there is no danger of a third party bringing an action before the Unified Patent Court and thus, blocking the opt-out.

It is advisable for European Patent owners who plan to file an opt-out to do so during the sunrise period so as not to run the risk of the opt-out being blocked by a third-party action before the Unified Patent Court.

Now, patent owners should analyse their portfolio of European Patents and pending applications and decide whether to file an opt-out for each of them.

The decision on whether or not to file an opt-out for a European Patent depends on several factors that influence the balance between the advantages and disadvantages of having the European Patent subject to the competence of the Unified Patent Court. The main advantage is that the patent owner will be able to bring a single infringement action, which will have unitary effect in all participating EU States. The main disadvantage is that third parties, in turn, will be able to bring a single action for invalidity, or counterclaim in invalidity, and invalidate the patent with unitary effect in all these States. The factors that should influence this decision are mainly the following:

            • the presumed strength of the European Patent;
            • the ease with which foreseeable infringements can be proved and the type of infringement (literal / by equivalence);
            • the States where the European Patent is in force;
            • the States where infringements are most likely to occur;
            • the economic resources of the patent owner and of the alleged infringers to litigate in several national courts;
            • confidence in the proper functioning of the newly created Unified Patent Court.

Optional Unitary Patent application after the grant of a European Patent

After the grant of a European Patent, the owner may optionally apply for a Unitary Patent within a one-month period since the publication of the mention of grant.

The applicants of pending European Patent applications who are close to a possible grant should consider well in advance whether they wish to apply for a Unitary Patent or choose not to apply for a Unitary Patent and validate the European Patent individually in the States of their choice using the “classical” European Patent system.

The main factors that should influence this decision are the same as those mentioned above for the opt-out decision, since a Unitary Patent will inevitably be subject to the exclusive competence of the Unified Patent Court. In order to remove the patent from the competence of the Unified Patent Court, it is necessary to choose not to apply for a Unitary Patent and, in addition, to apply for an opt-out for the European Patent.

Moreover, the costs for obtaining and maintaining the Unitary Patent must be considered.

Costs for obtaining a Unitary Patent. In general (although it depends on the States chosen), in order to obtain protection in at least 4 States participating in the Unitary Patent system, the cost for obtaining a Unitary patent is lower than that of validating the European Patent in the same States.

Maintenance costs. To maintain a Unitary Patent in force, a single annuity payment is made to the EPO, whereas in the case of a European Patent annuities must be paid to each national patent office of the States, in which the patent is to be maintained in force. The amount of the annuities for the Unitary Patent was determined by taking approximately the sum of the annuities at the national patent offices of the four EU States in which European Patents were most frequently validated. These four States were Germany, the UK, France, and the Netherlands (the amount remained unchanged after the UK left the EU). Thus, in general (although it depends on the States chosen), it can be said that the maintenance cost of a Unitary Patent is lower than that of a European Patent when protection is sought in more than 4 States participating in the Unitary Patent system.

For more information:

Information on the “Unitary Patent Package” is available at:

European Patent Office – The “Unitary Patent Guide”.

Unified Patent Court

Official texts of the agreements of the “Unitary Patent Package”:

EU Regulation No 1257/2012 for the creation of the Unitary Patent

EU Regulation No 1260/2012 on translation arrangements

EU Agreement No 2013/C 175/01 on the Unified Patent Court

We will be happy to provide you with personalised information. Please, do not hesitate to contact us if you are interested:

https://curell.com/en/contact/

 

Author: Robert Roser, European Patent Attorney

Photo by Christian Lue on Unsplash