A European patent with unitary effect (“Unitary Patent”) and the Unified Patent Court (“UPC”) are expected to come into effect in the Spring of 2023. Please find more information at https://www.epo.org/applying/european/unitary.html

The patent prosecution process will not change, but the system for patent litigation in Europe will be undergoing significant adjustments and broadening its scope since there will be a centralized system for patent validation and enforcement across Europe. With these upcoming broad patent reforms, there are certain new opportunities after a European patent is granted.

Unitary Patent

For all patents granted after the entry into force of the Unified Patent Court Agreement (“UPCA”), it will be possible to request a Unitary Patent within one month after a European patent is granted. A Unitary Patent will have unitary effect in all participating countries. This will make it possible to get patent protection in up to 25 EU Member States by submitting a single request to the EPO.

It is expected that most of the 25 EU Member States will participate and, so far, 17 participating countries have ratified the UPCA namely:

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

In any non-participating countries, protection must be obtained via individual validations as before.

Unified Patent Court

In the new system, the Unified Patent Court will always have jurisdiction over both infringement and validity proceedings for Unitary Patents. These types of proceedings can also be combined and heard by the same panel. The UPC will always decide on the infringement or invalidity of a Unitary Patent in the territory of all states in which the patent is effective. All decisions taken by the UPC, such as decisions on the validity of a patent, will have pan-European effect. Thus, there is a risk of a centralized attack on a Unitary Patent that could result in the revocation of the patent in all participating states. This may also result in a reduction in costs compared with the cost of multiple national proceedings. Please find more information at https://www.unified-patent-court.org/

In principle, the UPC will have jurisdiction over European patents granted in the past or future, in addition to the national courts which have had sole jurisdiction up to now. If no further actions are taken, concurrent jurisdiction exists until proceedings are instituted. Thus, third parties will be able to file a central nullity action before the UPC against a European patent. Conversely, the UPC can be used to bring a centralized action against an infringer based on a granted European patent.

During a transitional period of 7-14 years, it is possible to “opt-out” from the UPC having jurisdiction for all national parts of a European patent and to limit it to the respective national courts. An opt-out must be declared for each patent individually. An “opt-in” option for the UPC to have jurisdiction over a European patent is possible only once.

It is also possible for owners of already granted European patents to exclude the jurisdiction of the UPC before its establishment and thus before the possibility of a central nullity action. Such a request is available during a “sunrise period” of 3 months, which is expected to start in the beginning of 2023.

Reducing Complexity and Lowering Costs

In those participating countries in which the Unitary Patent is in effect, separate validations of the patent and associated costs for validation and, where applicable, translations will no longer be necessary. This change will save costs of parallel applications and remove the need for complex and costly national validation procedures. Renewal fees will also have to be paid centrally at the EPO, reducing the administrative burden. Given translation costs, obtaining a Unitary Patent can be worthwhile financially if choosing validation in at least four states anyway.

Post-grant translations will not be required after a six-year transitional period. During this period, a translation will be required for information only and will not have any legal effect.

There will be further cost savings with the reduction of annual renewal fees. The amount of annual renewal fees will be based on the fees previously charged in four countries. Currently a European Patent is only valid in the one or more member countries in which validation fees are paid and continue to be paid annually for the bundle patents.  However, for a Unitary Patent renewal fees can’t be reduced by the former practice of allowing individual national parts of a European patent to lapse by not paying renewal fees in certain countries.

This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.

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