Overview

Currently, it is necessary to validate a European patent in those European Patent Office (EPO) member countries in which protection is required. Here is a list of the countries. On 1 June 2023, the Unitary Patent (UP) system will come into effect. The UP system can replace or be used in addition to national validations in Europe. Thus, a portfolio can contain a UP and national validations.

The Unitary Patent will be a single patent with a unitary effect in a number of European countries. Enforcement and revocation of the UP will take place at the Unitary Patent Court (UPC). Revocation of the UP will remove rights in all the countries covered by the UP. It is possible to make use of both systems, that is, in addition to the UP system, to validate the European patent in any number of the countries listed above, to avoid the wholesale loss of rights that might result from revocation or nullification of the UP.

All litigation in connection with the Unitary Patent will be conducted before the UPC. The UPC will also have exclusive competence to decide on matters of infringement and validity relating to national validations. However, for seven years (possibly extendable) after the start of the UPC, it will still be possible for owners of national validations to start proceedings in national courts instead of the UPC. During this transitional period, owners of national validations can “opt out” of the UP system to ensure that proceedings in connection with the national validations can only be brought in the national courts to avoid the wholesale loss of rights mentioned above. The “opt out” can be withdrawn at any time.

Member Countries

As of this writing, the following countries have ratified the necessary legislation to participate in the Unitary Patent system:

• Austria
• Belgium
• Bulgaria
• Denmark
• Estonia
• Finland
• France
• Germany*
• Italy
• Latvia
• Lithuania
• Luxembourg
• Malta
• Netherlands
• Portugal
• Slovenia
• Sweden

* Germany will complete its ratification once the preparations are sufficiently advanced, which is expected in February 2023.

Notably, the United Kingdom, Switzerland and Norway are not part of the EU, so they are not able to join the UP system. It will be necessary to validate the European patent in those countries under the existing system to achieve protection there.

More countries may still ratify the legislation before 1 June 2023. Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia have signed the agreement, but have not yet ratified it.

Getting a UP

Once the European patent application is granted, the applicant can choose whether the resulting European patent should have “unitary effect” in the member countries. The Unitary Patent request must be filed no later than 1 month from date of grant. As set out above, this can be done in addition to national validations.

Once the European patent is converted to a Unitary Patent, the addition of countries to the UP system will not provide retroactive coverage via the UP in those countries.

Advantages and Disadvantages

A benefit of using the Unitary Patent system is that enforcement of the UP takes place at a single venue and covers all member states of the UP system. It is not possible to enforce the UP patent in a particular member state in which infringement takes place. Thus, there is a danger that the UP can be revoked, usually by way of a counterclaim in an infringement proceeding, or nullified, meaning loss of coverage in all member states. It follows that enforcement of the UP arising out of infringement in one of the member states may end with a loss of rights in all member states. Making use of national validations in addition to the UP system reduces the risk of loss of rights across all states.

The current system requires separate enforcement in each country in which the European patent has been validated. For example, a decision by a French court on the validity or infringement of a particular European patent has no effect in Germany. It follows that infringement in multiple jurisdictions will require parallel litigation, which is costly and can result in inconsistent decisions.

A Unitary Patent does not require validation in each member state, so it can be significantly more cost-effective when seeking protection in multiple European countries. This is in contrast with the alternative of working with what can be an expensive multi-faceted process, including the preparation of translations, meeting various national deadlines, etc. This is particularly the case when attempting to cover many countries. For example, a UP will require a translation of the specification into the official languages of the EPO. These are English, French, and German. Thus, translations into just French and German will be required if the specification is in English. This can take place during a transitional period of at least six years. In contrast, validations require translations at validation or several months thereafter. Furthermore, manual translations can run into thousands of dollars per country, depending on the length of the specification.

A Unitary Patent can be renewed by a single payment to the EPO without the need for a representative. The renewal cost of a UP can be significantly less than the cost of renewals in multiple EPO member states. The renewal fees for a UP are intended to be roughly four times the average renewal fee for a single country. It follows that covering more than three or four countries will represent a cost-effective approach as far as renewal fees are concerned. However, it is not possible to allow various countries in the UP system to lapse to save renewal fees.

Conclusion

The UP system should be given serious consideration. It can be inflexible, given the danger of centralised revocation or nullification, and the inability to reduce renewal fees by excluding countries. However, there can be significant cost savings, particularly in connection with translations, and, potentially, in connection with enforcement.

In summary, an owner has three options at grant of the European patent:

1. Extend the European patent solely by national validations.
2. Convert the European patent to a UP.
3. Make use of both (1) and (2) to avoid wholesale loss of rights resulting from revocation or nullification of the UP.

Disclaimer

This post is for general information only and does not constitute advice. We take no responsibility for any consequences resulting from actions taken based on the information provided above. Please get in touch if you require assistance or advice in connection with the Unitary Patent System.