After many years in the making, a significant new system of patent rights and litigation came into effect in the European Union on 1 June 2023, and particularly by virtue of the new Unitary Patent (UP) and Unified Patent Court (UPC).
After grant of a European Patent, it is now possible to obtain a Unitary Patent in place of, or an addition to, validating the European patent in individual European countries. The Unitary Patent is as a single, indivisible patent right granted by the European Patent Office (EPO), which is enforceable across all participating European Union (EU) countries in a single action before the Unified Patent Court.
Prior to introduction of the Unitary Patent, granted European patents could be validated after grant as a ‘bundle’ of national patent rights only, covering individual European countries selected by the owner.
While this traditional validation process is still available, and remains the only option to maintain rights in European countries that are not participating in the Unitary Patent system, the Unitary Patent provides an alternative means of maintaining rights in participating EU countries.
The Unified Patent Court will provide a centralised forum for the enforcement and revocation of European patents, including Unitary Patents, in all participating EU countries.
The Unitary Patent may provide significant cost savings and increased geographical coverage for many European patent owners, but may not be cost effective in all circumstances. Moreover, a centralised litigation system provided by the Unified Patent Court presents both benefits and risks to European patent owners. Further discussion of the advantages and disadvantages of the new Unitary Patent and Unified Patent Court system is set out below.
It is important that businesses consider the value of the new system and formulate a strategy for its use. Since the Unified Patent Court can have jurisdiction to consider infringement and validity of European patents even if they do not take advantage of a Unitary Patent, European patent owners may consider ‘opting out’ their European patents from the Unified Patent Court.
17 EU countries are participating in the new system from the outset and a number of other EU countries are expected to join later. However, many European countries are not intending to participate, either through choice or because they are not part of the EU. Notable absentees from the new system include the UK and Spain.
|Participating on commencement||Intending to participate in future||Not intending to participate/non-EU* countries|
|Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.||Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia.||Albania*, Switzerland*, Spain, United Kingdom*, Croatia, Iceland*, Liechtenstein, Monaco*, North Macedonia*, Norway*, Poland, Serbia*, San Marino*, Turkey*.|
10 largest European countries by GDP highlighted in bold.
To obtain a Unitary Patent, a European patent application is filed at the EPO in the same manner as before. However, at grant of the European patent, a European patent owner can now choose whether to obtain:
i) A unitary patent only (covering all participating EU countries);
ii) A unitary patent (covering all participating EU countries)
A traditional bundle of individual national patents (covering one or more non-participating countries); or
iii) A traditional bundle of individual national patents only (covering one or more participating EU countries or non-participating countries)
Notably, the new system does not preclude filing direct patent applications at national patent offices in Europe, without going through the EPO.
The deadline for requesting a Unitary Patent is one month after grant of the European patent, whereas the deadline for traditional validation remains three months after grant. For non-participating countries such as the UK and Spain, the traditional validation route will be available only.
There is no patent office fee for requesting a Unitary Patent but, during a 6-12 year transitional period, patent owners are required to submit a full translation of the patent specification into an official language of the EU other than English (or in English if the patent is not already in English).
A renewal fee will be payable each year to maintain a Unitary Patent in force. The renewal fee for the Unitary Patent is roughly equivalent to the total cost of renewal fees in a bundle of about three or four traditionally validated individual national patents.
The EU countries participating in the Unitary Patent system have agreed to transfer jurisdiction from their individual national courts to the single, centralised Unified Patent Court, for both European patents and Supplementary Protection Certificates (SPCs).
This change is significant since, previously, decisions of European courts had no effect in other countries, and therefore multi-jurisdictional litigation could only be taken in parallel. The centralisation of litigation is expected to reduce parallel litigation and associated costs, and may in due course increase legal certainty across the participating EU countries.^
Litigation for all Unitary Patents is conducted in the new Unified Patent Court.
The Unified Patent Court also has exclusive competence to decide on matters of infringement and validity relating to traditionally validated individual national patents and SPCs granted on those patents, across the participating EU countries, unless those patents are subject to an ‘opt out’. The Unified Patent Court has no jurisdiction outside of the participating EU countries, and so traditionally validated individual national patents covering non-participating EU countries are not under the jurisdiction of the Unified Patent Court.
Key advantages of the new system include wider geographical patent coverage for a lower cost, while enforcement can be carried out before a single patents court, the Unified Patent Court. For many patent owners, this makes the new system desirable. However, for patent owners that would otherwise be seeking protection in only a few (e.g. three or four) of the participating EU countries, the Unified Patent may be more expensive than the traditional European validation route. Further, if a European patent is considered of particularly high value, the risk that it might be revoked centrally (in a single action) before the Unified Patent Court may be too great, even if costs for the litigation might be lower. These and other advantages and disadvantages of the new system are set out in the table below.
|A UP covers 17 participating EU countries for only one renewal fee payable each year.||The cost of the annual renewal fee for a UP is higher than annual renewal fees payable for a traditional bundle of about 3 or 4 individual national patents in the participating EU countries.|
|It is not possible to allow the UP to lapse in a select number of participating EU countries to reduce annual renewal fees later on.|
|A traditional bundle of individual national patents is still required where protection is desired in non-participating countries, such as the UK or Spain.|
|During the transitional period, translation requirements and costs may be reduced if the owner would normally validate in one or more participating countries that currently require full translations.||During the transitional period, translation requirements and costs may be increased if the owner would normally validate in participating EU countries that do not currently require full translations.|
|The UP falls under a single jurisdiction, the UPC, which is expected to provide a streamlined and cost effective central litigation forum for the owner to enforce the patent across the participating EU countries. Enforcement of the UP could therefore occur in a single relatively swift action, without an owner needing to pursue parallel actions across multiple participating EU countries.||The UP falls under a single jurisdiction, the UPC, which is expected to provide a streamlined and cost effective central litigation forum for a competitor to revoke the patent across the participating countries. Revocation of the UP could therefore occur in a single relatively swift action, without a competitor needing to pursue parallel actions across multiple participating EU countries.|
The UPC is currently untested and may or may not be as favourable as some national courts to patent owners.
Litigation for all Unitary Patents is conducted centrally before the new Unified Patent Court. Where a European patent relies instead on traditional validations in participating EU countries, for a transitional period of at least seven years after commencement of the new system, a dual jurisdictional arrangement is available, where litigation may be conducted in the relevant national courts or centrally via the Unified Patent Court. At the end of the transitional period, unless a traditionally validated European patent is opted out of the Unified Patent Court system, it will automatically fall within the jurisdiction of the Unified Patent Court for the participating EU countries.
During the transitional period, European patent owners that are not relying on the Unitary Patent can take steps to opt out their traditionally validated European patents across the participating EU countries from the Unified Patent Court system. This will ensure that court proceedings, such as a patent revocation action, can only be brought about by a competitor or other third party in the national courts, reducing the risk of the European patent being revoked in a single court action*. A European patent will stay opted out until the end of the patent term, unless the patent owner withdraws the opt out at any time. An opt out may be requested for both granted European patents and pending European patent applications. If an opt out has been withdrawn, it is not possible to opt out for a second time.
*It should be noted that central opposition of a European patent nine month period following its grant will still be possible regardless of whether action is taken to opt out.
The new Unitary Patent and Unified Patent Court system is intended to provide a more cost effective and streamlined procedure for applicants, but the significance of the various advantages and disadvantages of the system to a particular European patent owner can depend on a number of factors. Factors may include: the size of the commercial market for the patented invention across different European countries; the scope and value of the European patent, and the likelihood of any litigation taking place.
If you wish to discuss the relevance of the new Unitary Patent and Unified Patent Court system to your European patent properties, or require more general information, please contact your usual FB Rice representative.
^Exactly how centralised litigation will work when enforcing SPCs, which are nationally limited rights extending the term of a patent in a particular country due to delays in approving a drug for sale in that country, is still unclear.