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A guide to the Unitary Patent and Unified Patent Court

Unitary Patent and Unified Patent Court

After many years of false starts, Europe will soon have a Unitary Patent system and a centralised patent court system. This article provides a primer on the most important features of the new patent and court systems as well as offering some tips on how to prepare for them.

We have tried to cover the Unitary Patent and Unified Patent Court systems at a level of detail that is useful in practice at this stage. This leaves many features of the new systems beyond the scope of this article. If you would like advice on any aspect of the Unitary Patent or the Unified Patent Court, then please contact us at mail@mskpatents.com.

What is the Unitary Patent system?

The Unitary Patent (UP) system will allow patent applicants to get a single patent covering at least 17 European countries on launch. This includes major countries such as Germany, France, Italy and the Netherlands. Since the resulting Unitary Patent will be licensed and enforced as a whole, this should make it easier to get patent protection covering most of Europe.

The ability to enforce each Unitary Patent as a whole will allow a single injunction to cover all 17 plus countries in the UP system and should also allow higher damages to be obtained in a single infringement action. On the other hand, a Unitary Patent found to be invalid will be revoked as a whole, whereas under the current system the national parts of European patents can only be revoked individually.

How can I get a Unitary Patent?

Once the system begins, you will be able to obtain a UP as an option when a patent is granted at the European Patent Office (EPO). This means that the process of applying for and obtaining a European patent will be the same, but there will be an additional option at the end of the process. You will still be able to choose a set of separate European national patents instead if you prefer. The existing system will operate in parallel with the UP, so you will also be able to go for a UP plus a selection of other individual European countries on a single European patent.

Importantly, the timescale for choosing whether to get a UP at the end of the European patenting process will be shorter than the current timescale for choosing which European countries to get protection in (known as validating a European patent). We will have a period of one month after grant of the patent at the EPO in which to apply for a UP, as compared to 3 months for the conventional validation process.

You will also need to file a full translation of the patent into another EU official language to obtain a UP. Due to the relatively short timescale, work on the translation should usually start soon after grant of the European patent is announced.

In practice, you will simply need to ask us to obtain a UP around the time of grant and ideally when we send you the notice of allowance. We can then handle the necessary paperwork and do the translation at the same time as we translate the claims into French and German for grant. If we are handling prosecution of the European patent then we will let you know the options well ahead of the deadline.

When will the Unitary Patent system start?

The new system is expected to start operation early in 2023. The actual start date will be announced at least three months ahead of that date, perhaps late in 2022.

It will be possible to make an early request for a UP from when the start date of the UP system is announced. This will only be possible for patents that reach the allowance stage in the window between the UP start date being fixed and the actual start date. It will also be possible to delay the grant of such patents until after the UP begins so that they can be granted as a UP. Please let us know if you would like more details on how this transitional system will work at the EPO. For patent applications we are already handling, we will of course let you know the options at the time of allowance.

Which countries are included?

The full list of countries that have agreed to join the UP system is:

Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia and Sweden.

Not all of these countries will be covered by UPs from the start however. Also, we understand that Poland will not participate in the UP system for the foreseeable future.

The list of countries that will be covered from the start of the system is:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

Which major European Patent Convention countries are not included?

Examples of larger countries that are members of the European Patent Convention but will not be part of the UP system are: UK, Spain, Switzerland, Turkey, Norway and Croatia. These countries can still be covered by using the current European patent system.

For example, a common policy on grant of a European patent at the EPO might be to obtain a UP plus a conventional validation in the UK.

What happens when a new country joins?

When one of the remaining 8 countries in the full list above joins the UP system, all Unitary Patents granted from that time onwards will also cover the additional country. However, Unitary Patents already granted by the time the new country joins will not be extended to cover that country. This means that newer Unitary Patents will cover more territory than older patents as the system develops.

What is the cost of a Unitary Patent?

The main initial cost of getting a UP will be the need to translate the patent into another official EU language.

Once you have a UP, we will need to pay a renewal fee every year for the life of the patent. These fees are low for the first 5 years (costing roughly the same as the renewal fees for Germany alone at around 600 EUR in total) and increase to be around 2.5 times the renewal fees for Germany over the last 5 years of the patent’s life.

A good comparison would be the currently popular strategy of validating a European patent in France, Germany and the UK. The UK will remain outside the UP system of course so there is no change there and a conventional validation must still be used. Compared to the cost of validating a European patent in France and Germany, including the costs of translation and the renewal fees up to 5 years from the patent filing date, the UP is only slightly more expensive. We think this represents excellent value for protection in at least another 15 European countries, especially when compared to the total cost of obtaining the patent in the first place. The UP is an even better value proposition if you would normally validate in Italy, as the translation requirement for the UP is the same as for Italy alone.

On the other hand, the renewal fees for the UP increase significantly over the lifetime of the patent as mentioned above, so a UP becomes gradually more expensive to maintain relative to validations in France and Germany as the patent ages. Whereas it is possible to drop one or more countries over the lifetime of the patent to reduce costs using conventional validations, the UP must be maintained as a whole or not at all.

In summary, whether or not the UP represents good value for money will depend on how many countries you want protection in and how long you expect to maintain the patent for. If you only need protection in one or two UP countries and expect to maintain the patent for its full lifetime then conventional validations are probably a better option. On the other hand, if you want protection in multiple UP countries or only expect to maintain the patent for a few years after grant then the UP is likely to offer better value than the current system. It will be fairly straightforward to calculate the better option in individual cases once we have the case details.

Please let us know if you would like advice on whether the UP system will be more or less cost effective than the current system for your future European patent filings.

How should I prepare for the Unitary Patent?

We recommend deciding ahead of time on a policy for choosing which patents will use the UP system and which will use the current “classical” European patent validation system. For example, you might want to use the UP system plus a validation in the UK for less critical patents, whereas you might want to use a selection of conventional validations followed by an opt out (discussed below) for your most important patents. We will let you know when a start date for the UP is announced.

Please let us know if you would like advice on developing a cost-effective strategy for European patent validations after the UP system comes into effect. Please contact us at mail@mskpatents.com with any questions you may have, or to arrange a consultation.

More information on the Unitary Patent system (including some helpful maps) can be found on the EPO website here: https://www.epo.org/law-practice/unitary/unitary-patent.html.

What is the Unified Patent Court?

The Unified Patent Court (UPC) is a new centralised European patent court, which will operate in tandem with the UP system. The UPC will enforce and revoke patents across the whole UP group of countries, unlike in the current system where individual European patent validations are enforced and revoked on a country-by-country basis.

Which patent cases will be dealt with by the Unified Patent Court?

Firstly, the UPC will deal with all patent cases based on UPs. The UPC will handle both infringement actions and revocation actions. National courts will not be able to handle cases involving UPs.

Secondly, the UPC will handle some cases involving European patents granted under the current system, which we will call classical European patents (CEPs). These are essentially bundles of national patents, the individual national parts being referred to as the validations of a CEP. Infringement and revocation actions involving CEPs in the Unitary Patent countries can be dealt with by either the new court system or national courts by default. However, if a CEP is first “opted out” of the UPC system then cases involving that CEP will be dealt with by the national courts only.

What if I don’t want the new court to deal with my existing European patents?

In that case you can opt out of the new court system for a selection (or all) of your existing European patent portfolio. The opted out patents will then be handled by national courts in the same way as under the current system for the lifetimes of the patents concerned. It is best to do this before the UPC system comes into effect to make sure that a UPC action is not started involving one of the patents you wish to opt out, at which point the patent in question is locked into the UPC system. On the other hand, litigation is rare in practice so it will generally be possible to opt out later on.

We can handle the opting out process on your behalf for a small fee if you give us a list of your patents to opt out. We note that the opting out process will be more complex for co-owned patents as all of the co-owners will need to agree. Please let us know if you would like advice on this point.

The start of the period for opting out existing patents will be a few months before the start of the UP and UPC systems themselves. We will let you know when opting out will become possible closer to the time.

How should I prepare for the Unitary Patent Court?

We recommend deciding in advance which patents you would like to opt out of the UPC system. It would be best to have a list of patents to opt out ready to go when the start date of the UPC and the start of the opt out period are announced. Please let us know if you would like advice on selecting which patents to opt out. This would also be a good time to consider an audit of your European patent portfolio, which we would be happy to assist with.

If any of the patents you would like to opt out are co-owned then it would be best to get in touch with the other co-owners well ahead of time to make sure that they agree with opting the patent out of the UPC system. The same is true for licensees of your European patents. You may wish to review existing licensing agreements with the licensees, agree on whether the patents concerned should be opted out and discuss how those patents should be enforced after the new system begins. We would of course be happy to assist with this review process.

Also, the start of the UPC will offer new opportunities for patent licensing and infringement actions. You may wish to commission searches for potential infringement of your patent portfolio in the UPC region in preparation. We provide this type of searching for a reasonable cost so please get in touch if you would like a quotation. Please contact us at mail@mskpatents.com with any questions you may have, or to arrange a consultation.