History

The idea to create a uniform patent system valid in all members of the European Union dates back to the Seventies. In parallel with the creation of the European patent with which you are familiar, the basic features of a patent for the Common Market were already prepared. The various attempts in 1975, 1989, 2000 and 2003 always failed, in particular, because of language issues.

In 2011, all members of the European Union except Spain and Italy decided to create a Unitary Patent System within the framework of enhanced cooperation. In addition to the patent as a protective right, a common court was intensively negotiated which was to be responsible for infringement and nullity proceedings.

Initially, an entry into force in 2014 seemed likely. Various lawsuits against the adopted regulations, including before the Federal Constitutional Court, and not least the United Kingdom’s exit from the European Union made failure seem possible right up to the end.

Even if various legal issues remain open and even if by far not all of the 25 signatory states have finally confirmed their actual participation, the minimum quorum has been reached. Germany has meanwhile filed the ratification certificate relating to the Protocol on Provisional Application to the Agreement on a Unified Patent Court.

As per the latest announcement from the UPC Administrative Committee, the Court will start to accept cases on 1 April 2023.

The Unitary Patent – Introduction

The European patent according to the European Patent Convention (EPC) known to you is split up into national patent once it has been granted.

This is why upon grant of the European patent, you elect the states in which you want to obtain patent protection. The so-called national parts of the European patent are exclusively subject to national legislation and national case law with regard to the issues of patent infringement and invalidity, although there is a uniform basis. Thus, an infringer must be sued in each Contracting State and invalidity must be sought in each Contracting State.

Upon its grant, the Unitary Patent is valid for all states participating in the system at the time of grant. If the Unified Patent Court in one participating state finds infringement, that finding automatically applies in every other participating state as well. If the patent is declared invalid, it will lapse altogether.

In its effect, the Unitary Patent is thus to a certain extent comparable with the European Union Trademark or the Community Design, which are valid as protective rights for all states of the European Union.

Application and Grant

The European patent with unitary effect is granted by the European Patent Office (EPO). The application and grant procedure is identical with the procedure when filing a European patent application (EP) according to the European Patent Convention (EPC) rules. Thus, initially, nothing will change here for the applicant.

The request for unitary effect can be filed for all European patents that have been granted on or after 1 Aril 2023. Transitional measures have been taken to allow requests being filed already from the deposit of the German instrument of ratification on (deposit is planed for December 2022). Moreover, transitional measures apply to patent applications that have received the communication according to R. 71(3) EPC. For these applications, applications may file a request to delay the decision to grant a European patent so that it will ensure that the mention of the grant of the European patent is published in the European Patent Bulletin on or after 1 April 2023.

It is likewise possible to obtain grant in both systems simultaneously, especially if patent protection is to be obtained also in states outside the Unitary Patent system. The following diagram shows the schematic flow of the application and grant procedure.

Participating States

With the exception of Croatia and Spain, all EU states participate in the Enhanced Cooperation in the field of the creation of a Unitary Patent. As of today, the Unitary Patent will initially be available for the following 17 states:

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

More states will later be added to the list as the Convention has also been undersigned by Greece, the Republic of Ireland, Poland, Rumania, the Slovak Republic, the Czech Republic, Hungary and Cyprus.

Croatia and Spain will be able to join at a later point of time, if they wish. In practice, therefore, an applicant will soon receive the European Patent with unitary effect for 17 states. In these states, all advantages of the new system are usable and the European patent has a unitary effect. If protection in further EU states is required, the applicant may validate his European patent in parallel in the remaining countries according to the conventional EPC procedure.

Costs

The costs of the unitary patent as well as of the well-known European patent can be divided into the costs of the application and granting procedure, the costs of validation and the costs of subsequent administration. Of particular importance are possible costs in the event of patent disputes, which we will discuss in connection with the explanations on the new jurisdiction.

Application and grant procedure

As the application grant procedure remains the same as in the EPC, the costs for these two procedure sections will not change. The costs for the application and the grant procedure are therefore identical for the European patent with unitary effect and the European patent according to the EPC.

Validation EPC

According to the EPC system, validation means fulfilling the requirements for the validity of the European patent in the individual EPC states. This includes in particular the submission of translations and the appointment of national representatives in the EPC system.

For a transitional period of twelve years, a translation of the complete European patent with unitary effect into English is provided if the application is in German or French. If, on the other hand, the application text is in English, a translation into German or French is required. For the European patent with unitary effect, therefore, a process comparable to validation exists for the time being.

Administration / Annuities

The costs of administering the European patent with unitary effect and the EP are essentially determined by the annual fees incurred. Further administrative costs may be incurred, for example, through change of owners, etc.

For the European patent with unitary effect, the annual fees will be paid centrally to the European Patent Office. It was decided that the annual fee to be paid would correspond approximately to the sum of the annual fees of the (then) “True Top 4” of the EPC, i.e. Germany, France, Great Britain and the Netherlands. The idea behind this was to attract as participants in the European patent with unitary effect all those applicants who had previously validated EPC patents in these countries.

We will be happy to advise you on costs and fees in the European countries relevant to you.

The Unified Patent Court – Introduction

The Unified Patent Court (UPC) is a new EU jurisdiction and it is an integral part of the system of the European patent with unitary effect.

In the future, the UPC will rule on the infringement as well as the invalidity of unitary patents. However, the UPC will not only be responsible for unitary patents.

Of particular importance for you as owner of existing European patents: Also, the already existing European patents according to the EPC (EP) will be subject to the jurisdiction of the UPC. This will overcome a unification of the previously partially differing jurisdiction in the patent system of the EPC.

The decisions of the UPC will apply system-wide. A decision on invalidity or an infringement will thus apply to all states in which the unitary patent or the European patent under the EPC is valid. This is an essential change for EPC patents, because up to now the decisions of the national jurisdiction have only been valid for the respective national part.

However, the structure of the UPC and the responsibilities of the various court chambers are likely to lead to an increase in the costs of court proceedings. It is also unclear how the jurisdiction of this court will develop on certain aspects of patent law, with particular emphasis on computer-implemented inventions and biotechnological inventions.

Structure of the Unified Patent Court

The Unified Patent Court (UPC) consists in the first instance of local or regional chambers and the so-called central chamber. The court of second instance is located in Luxembourg. The EU Court of Justice serves as the final instance.

Local and regional chambers

Local chambers are court locations within states. In Germany, local chambers are expected to be established at the regional courts in Munich, Hamburg, Mannheim and Düsseldorf. Regional chambers are established jointly by several states.

Thus, the Baltic States and Sweden have decided to establish a joint regional chamber.

The local and regional chambers are called upon in cases of patent infringement. In the case of a nullity action brought against the allegedly infringed patent, the local or regional chamber dealing with the infringement issue is competent.

Central chamber

The central division is competent for invalidity actions which are not related to infringement proceedings (isolated invalidity action). The central division is also competent for infringement actions if no local or regional division is available or if the infringement action concerns a defendant outside the contracting states. In all other cases, the central division is responsible for declaratory actions. The central division has its seat in Munich and Paris. The jurisdiction is determined by the technical field.

Originally, London was also planned as a location. A replacement location for the planned headquarters of the central chamber in London has not yet been determined; temporarily, the areas of expertise that were planned for London will probably be divided between Munich and Paris until another location is found. So far, Milan has been being discussed as an addition.

Opt-out / Opt-in Option

For all existing European patents and the new European patents with unitary effect, the new jurisdiction will automatically be the UPC. A decision of the UPC will have effect for all 17 participating countries – this will apply to existing EPs as well as to a newly granted European patent with unitary effect.

For already existing European patents, the holder can still influence the court jurisdiction during a transition period of 7 (extendable to 14) years by filing a so-called opt-out request.

With such a request, the national courts will remain competent for the respective European patent. The request can be filed again after seven years and be extended by further seven years. An opt-out request is only possible if no proceedings are pending before the UPC (e.g. by an action for revocation).

Opt-out request can be filed from 1 January 2023 on.

Conversely, it is also possible at any time, for an as yet unspecified fee, to file an opt-in request so that patent infringement and invalidity proceedings are heard by the UPC.

If you do not file an opt-out request as soon as the European patent with unitary effect enters into force, infringement and nullity proceedings – both of the European patent with unitary effect and of the EPC – will automatically be heard by the EPC.

Pro and Contra European patent with unitary effect

The extent to which the European patent with unitary effect, the EPC, a combination of the two systems or the filing of individual national applications is worthwhile for you, will be determined by your patent strategy, in particular your current choice of countries.

The advantage of the European patent with unitary effect is the uniform effect throughout the participating states. The validations in EPC states that have been necessary up to now are no longer required. The costs of the renewal fees will also decrease if you have selected more than four EPC states participating in the European patent with unitary effect system.

It is problematic that important countries in Eastern Europe and Spain do not yet participate in the system. Great Britain will not be accessible via the European patent with unitary effect. It is neither clear how jurisdiction will develop before the Unified Patent Court and what costs will actually be incurred for court proceedings in the new court system.

Your decision

It is now up to you to decide what to do with your patent applications and granted patents.

• Should a request for a patent with unitary effect be filed, insofar as your patent applications are still pending at the European Patent Office?
• Do you need protection also in countries which do not participate in the European patent with unitary effect?
• Do you want to make use of the opt-out option? Or should all proceedings take place before the EPC?

If you need further decision support or information, please do not hesitate to contact us. We are available for you at any time.