What is the unitary patent?
It is a system for the protection of intellectual property rights in all the countries that have decided to join the Unified Patent Court Agreement.
Currently, 17 states have ratified the treaty: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. However, there are 8 more states that have ratified, but are adapting their national regulations to participate in the Unitary Patent system, these are: Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, Slovakia and Slovakia.
Consequently, once these 8 states adapt their national legislation, this new system will allow obtaining patent protection in up to 25 EU member states by submitting a single application to the EPO, which will simplify the procedure and make it more cost-effective for applicants.
What is the role of the Unified Patent Court?
The Unified Patent Court (UPC) is a court, composed of a Court of First Instance and a Court of Appeal, to resolve disputes between patent owners and third parties.
As regards its structure, it should be added that a Patent Mediation and Arbitration Centre is provided to encourage amicable settlements.
The Court will be composed of judges from all participating contracting Member States. The panel of judges is composed of qualified legal and technical judges with extensive experience in patent litigation.
The UPC will provide a uniform, specialised and efficient framework for patent litigation at European level. This court will have competencefor infringement and invalidity actions, both for classic European patents (unless opt-out has been requested) and for European patents with unitary effect. It will have exclusive jurisdiction in the case of invalidity actions against European patents with unitary effect.
What are the advantages of the unitary patent?
With this new protection route, patent protection in the European Union is simplified:
- One unitary patent application. The request for unitary effect must be made within one month after the grant of the European patent.
- Before a singlepatent office.
- In a single language.
- And assuming payment of a single annuity or fee.
Who can apply for the European patent with unitary effect
The patent with unitary effect can be applied for by any holder, although it is recommendedto do so through your agent, without having to be a national or residentof a country that is part of the system. This new form of European patent validation must be carried out within one month from the publication of the grant of the European patent.
For example, a Spanish patentee(company or natural person) can apply for the patent with unitary effect, even if Spain is not part of the system.
European Patent Attorney such as ISERN, can also representany applicantwho wants to use this system, this option being the most recommended.
When does the patent with unitary effect and the unified patent court come into force?
The European patent with unitary effect and the unified court enters into force on 1 June 2023, once Germany has ratified the agreement, thus allowing the implementation of the mechanism as one of the essential states.
However, from 1 March 2023 begins the so-called sunrise period so that the incumbents can prepare themselves by implementing a series of transitional measures.
What transitional measures are set out in the sunrise period of the unitary patent?
The European Patent Office establishes specific exceptions during the sunrise period in order to be able to apply for unitary effect in European patents that are granted on the dates close to the entry into force of the new system. The transitional measures are as follows:
- Early filing: allows the unitary effect to be requested before the entry into force of the unitary patent system. The EPO will save the application and automatically register it with unitary effect when this route of protection is in force.
- Delay request: allows the grant of the patent to be delayed. The EPO will delay the grant so that it will be published once the unitary patent comes into force and, thus, can request this unitary effect for that invention.
- Opt-out (opt-out): “opt-out” (opt-out) applications can be filed to remove granted European patents and published applications from the jurisdiction of the Unified Patent Court.
How to obtain a European patent with unitary effect
Before the EPO can register a unitary patent, the applicant must obtain a European patent. The European patent application must therefore be filed and processed under the European Patent Convention (EPC) in the same way as at present.
Once the European patent has been granted, the holder has a period of one month from the date of publication of the mention of the grant in the European Patent Bulletin, to file a “request for unitary effect” with the EPO to obtain a unitary patent.
In order to be registered as a unitary patent, the European patent must have been granted with the same set of claims in respect of all 25 participating member states.
The cost of a unitary patent
The costs of a unitary patent will be the same as for a European patent until grant, since the procedure starts with the application for the European patent in both cases. However, subsequently, the cost will be lower, since with a single translation protection can be acquired in all the member countries of the agreement, as opposed to the classic validation that has to be carried out country by country.
The cost of maintaining the patent is also reduced. Only one single annuity will be paid to maintain the unitary patent in all its countries.
There is support for translation of up to 500 euros, so the savings can be even greater. Contact ISERN for more information.
Does it affect existing patents?
Once the Unified Patent Court (UPC) agreement comes into force, it will apply to any European patent with unitary effect, to European patents granted and validated in a classical way and to European patent applications. However, for a transitional period it will be possible to avoid the jurisdiction of the UPC through the registration of an opt-out.
If a European patent is found within months of grant, it may be registered as a unitary patent. For this, it must comply with the substantive and formal requirements of the patent with unitary effect.
There are two possible avenues of protection:
- European patent:
- Classical validations:
- European patent:
- Unitary patent.
- Unitary patent
- National patents before the offices of each country.
- National patents before the offices of each country.
It must be taken into account that the unitary patent will not be valid in states that do not participate in this agreement or in those that have not ratified it. Nor in countries outside the EU.
In this case, the registration will have to be done by combining several options such as, for example, national validation of the European patent and the unitary patent.
The unitary patent step by step
The savingimportant is in the strategyof protection and in the translationof the patent.
Will it be validated in any EU country that is not part of the PU?If the answer is yes, then the translation will be made into the language of that country to take advantage of it.
Does the European patent derive from a priority patent application in any EU country? We use this patent as a translation, making the necessary modifications.
Are there plans for possible infringement litigation in any EU country? We will translate into the language of that country so that we can use this translation in future litigation.
What if I am not interested in the Unitary Patent or the Unified Patent Court?
What if I am not interested in the Unitary Patent or the Unified Patent Court?
As has been discussed on several occasions, the European patent with unitary effectis a new wayto unified protection in all statesthat have ratified the agreement.
However, this is not the only option. The important thing is to define, together with your agent, the best strategy for protection:.
- Patent with unitary effect.
- Classical validations.
- Combination.
- Combining the European patent with unitary effect with the classic validations.
At the level of defence of rights, it is necessary to analyse whether it is more interesting to go to the UPC or to the National Court, depending on the defence strategyand the patent modepatent mode.