The Unitary Patent is now a reality

More than a decade after the EU regulation on enhancing cooperation towards the establishment of a unitary patent system, and even longer after talks on the topic had started (the first proposed draft for this regulation was presented by the European Commission in 2009), this long-term project has hit one of its final milestones by coming into force, and becoming operational on the 1^st of June 2023.

 

What is it?

The Unitary Patent System is the EU’s answer to an issue faced by any patent owner or applicant wishing to secure rights in several countries, namely the geographical fragmentation of the patent protection system and filing procedure. Patents are territorial rights in nature, which means that they are only protected in the countries or territories in which they are registered. For any company wishing to protect their innovation in several countries, this creates very specific challenges when it comes to securing patent rights over the innovation in all relevant territories, and at the time of managing and enforcing those patents. Until now, there only existed national patents, valid only in the specific country in which they are registered.

Filing patent applications in many countries can be both burdensome in terms of administrative requirements, and very costly due to having to pay filing fees separately in every country in which protection is sought. The Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC), sought to remedy at least in part to this problem by centralising patent filings. The PCT, administered by the World Intellectual Property Organisation (WIPO) allows the filing of a single patent application designating the countries (participating to this scheme) in which protection is sought for an invention. The EPC, administered by the European Patent Office (EPO) allows for a similar system, though limited to European countries (note that the EPO is not linked to the European Union, and therefore countries outside the EU do participate to this scheme).

The intrinsic limitation of both the PCT and the EPC systems however is that after filing, the same geographical fragmentations as mentioned above keep applying: these international or European patent applications then become national titles in the designated countries which have accepted the application. In other words, they do not give rise to one single patent right, but to a bundle of national patents which then have to be managed and enforced individually.

And this is precisely where the Unitary Patent System is fundamentally different: not only does it centralise the patent filing procedure, it can culminate in the grant of a single unitary patent valid in several countries. However, this new system which has entered into force on the 1^st of June does not represent a fully integrated procedure centralising patents throughout the EU, as not all EU Member States chose to participate to it, or have yet ratified the UPC Agreement (see below). It is also important to keep in mind that this new scheme does not aim to replace the existing national and regional patent systems currently run through the national patent offices and the EPO, but rather to complement them by providing an additional cost-effective procedure for patent applicants seeking protection across the EU Single Market.

 

How does it work?

The first element to take into account is that this Unitary Patent System is in reality governed by a combination of separate measures: the 2012 EU Regulations implementing enhanced cooperation in the creation of unitary patent protection and applicable translation arrangements, and the 2013 Agreement on a Unified Patent Court (the UPC Agreement).

The distinction is actually important because not all EU member states participate to the enhanced cooperation mechanism, and not all that do participate have ratified the UPC Agreement, meaning that a fractioned application of this unitary patent system will be observed at least for its first years.

Indeed, for the full unitary patent procedure to come into place (i.e. a single patent application which translates into a single patent enforceable throughout different countries through a single Court, the UPC), the Member States must be part to the Enhanced Cooperation mechanism in the creation of unitary patent protection, and must have signed and ratified the UPC Agreement. So far, only 17 countries have done so: Germany, France, the Netherlands, Belgium, Luxembourg, Portugal, Denmark, Finland, Estonia, Lithuania, Latvia, Bulgaria, Italy, Slovenia, Greece, Malta and Austria. All the other Member States, (with the exception of Spain and Croatia which for now do not participate in the Unitary Patent System at all) are yet to ratify the UPC Agreement.

These fractioned levels of participation to the unitary patent system mean that, for now, it is only possible to obtain a unitary patent covering those 17 countries which have ratified the UPC Agreement.

 

The unitary patent application procedure

Let us now look at the way in which a unitary patent can be obtained. The registration of unitary patents will be a new duty of the European Patent Office (EPO), and therefore much of the filing procedure for unitary patents will be the same as those for the filing of “classical” European patents.

In effect, the way to obtain a European patent with unitary effect is to file a European Patent application through the EPO, and once the EPO has granted the patent, the applicant must request unitary effect using the EPO Form 7000 instead of going through the national validation procedure which European patents normally do before being registered and enforceable.

This must be done no later than one month after publication of the grant of the patent by the EPO in the European Patent Bulletin, and is subject to two important conditions:

• The patent claims must be identical for all the countries in which the unitary patent will take effect (in other words, there is no possibility to amend or adapt the patent claims depending on the country, they must be exactly the same);
• A translation of the European patent must be provided (to English if the EP proceedings were conducted in German or French; to any other language of the European Union if the EP proceedings were in English). In effect, the Patent claims and specifications will already have been translated for the prior EP procedure, however, the description section may yet have to be translated at this stage.

Once the request has been filed, and provided that all procedural requirements are complied with, the EPO will grant a patent with unitary effect, valid and enforceable in all countries participating to the scheme. As we can see, this procedure is exceedingly simple, and will not require the payment of any extra fees.

 

Once the patent has been granted: enforcement and jurisdiction

Having a European patent with unitary effect is all well and good, but how can one enforce it in practice? The question of enforcement has actually been one of the most difficult hurdles at the time of creating this unitary patent system: granting a patent common to many countries is one thing, but who will have the deciding voice in determining disputes on these patents?

This is where the UPC Agreement comes into play: the idea is that this Unified Patent Court, with several branches posted throughout Europe, and its Appeal Chambers in Luxembourg, has jurisdiction (i.e. the authority to decide cases) for cases involving unitary patents. The UPC’s competence will however be limited to European patents, and will not extend to national patents, which will still be the remit of national courts.

As explained above, the fragmented level of participation to and ratification of the Unitary Patent System, as well as the opt-out options which will be available for the first 7 years of the scheme (see our blog post on the matter from a few months ago here) mean that there is a rainbow of options and possibilities regarding enforcement jurisdiction for patents in Europe, depending on the type of patent, the use of the opt-out option, and the countries covered. We have tried to summarise them here:

• European Patent with unitary effect --> under the jurisdiction of the UPC;
• European Patents with effect in the 17 countries having ratified the UPC Agreement --> under the jurisdiction of the UPC;
• European Patents with effect in the 17 countries having ratified the UPC Agreement, but in which the “opt-out” was requested --> under the jurisdiction of national courts;
• European Patent with effect in countries which have not ratified the UPC Agreement or not participating to the enhanced cooperation mechanism --> under the jurisdiction of national courts;
• National Patents granted by national patent offices --> under the jurisdiction of national courts.

 

Benefits of the Unitary Patent for SMEs and strategic considerations

The main benefit of this new scheme is the simplification of procedures and lower costs associated with obtaining patent protection throughout the EU Single Market. A simple request for unitary effect at the end of the European Patent application procedure will lead, in one swoop, to the grant of a single patent right valid in all countries participating in the scheme.

In addition to the single patent filing procedure which already existed under the EPC, there now is the possibility to maintain the patent right through the payment of a single yearly renewal fee (instead of having to pay yearly fees in every country in which the European Patent had been validated). This is not only a great simplification of procedures, but can also amount to an important lowering of these renewal fees.

Indeed, the fees payable annually for the renewal of the unitary patent were set based on the cumulative patent renewal fees in place in France, Germany, the Netherlands and the UK (the top 4 countries in which European Patents are validated nationally). In effect, this means that if one were to calculate the cumulated renewal fees payable throughout the life of a Unitary Patent (up to 20 years), this total would be roughly equal to the equivalent cumulative renewal fees which would have to be paid for national patents in 4 countries, and 80% lower than what would have to be paid to maintain national patent rights in all EU countries participating to the Enhanced cooperation mechanism for the same duration. Admittedly, this also means that the Unitary Patent System might not be appropriate for those who only seek to patent their invention in less than 4 countries.

Likewise, enforcement is made much simpler and cost-effective by opening the possibility to bring a case in front of one single transnational court, instead of having to start proceedings in every single EU country in which an infringement has taken place. Furthermore, important court fees reductions have been introduced in order to benefit SMEs needing to enforce their unitary patents against infringers.

 

Now that the unitary patent system has finally come into force, and the necessary institutions, rules and procedures are in place, it remains to be seen how it will be taken up by European patent applicants, and how the Unified Patent Court will implement its new-founded competencies.  For now, patent applicants interested in finding out more information about the unitary patent protection mechanism can read through EPO’s Unitary Patent Guide which provides a detailed step-by-step explanation of how it works.

 

Picture by Alexey Larionov on Unsplash