The Unitary Patent and the Unitary Patent Court: Possibilities and threats

The Unitary Patent and the Unitary Patent Court: Possibilities and threats

Guest post by Sofia Willquist and Sidsel Hauge of Awapatent

For a long time the possibility of having a unified coverage of patent rights throughout the European Union has been discussed. Several attempts have been made to create the EU patent, but all have previously failed. The latest attempt, however, was successful, to the extent that an Agreement on a European patent Court could be signed, as an enhanced co-operation between 25 of the 28 member states (Spain, Italy and Croatia are currently not members of the enhanced co-operation). The Agreement must now be ratified in at least 13 of the member states (currently 7 have ratified )[1] in order for the Regulation on the European patent with unitary effect to enter into force.

The European Patent with Unitary Effect

The European Patent Office (EPO) has been responsible for granting European patents since the ‘70s. After grant, a bundle of national rights can be obtained in the 38 member states through national validations. With the new system, the EPO will still be responsible for all European patents applications up until the grant of the patent and the substantial patent law is unchanged.

After grant, the patentee will in the future have the choice to proceed as before with a bundle of national patents or to request the European patent with unitary effect, i.e. one single designation for 25 EU states, possibly combined with nationally validated bundle patents for those countries that are not members of the EU.

Some of the important aspects of the Unitary Patent is that the validation and translation into national languages will not be required and that only one renewal fee is to be paid to the EPO. The level of this single renewal fee was also the last issue to be solved, before moving forward with the Unitary patent package. It has recently been set to the so called “true top four” [2], i.e. an amount corresponding to the renewal fees of the four most common countries for validations (GB, FR, DE and NL).

The European patent with unitary effect will thus cover most of the EU states, providing patent protection in an economy comparable to the US, the difference now being that it will be at a fraction of the cost that it used to incur for a European patent, which had to be validated in many different member states.

It is now foreseen that the Unitary Patent can be requested for granted European patents sometime during 2016, when the Agreement on the Unified Patent Court has entered into force.

The Unified Patent Court (UPC)

The UPC will have exclusive competence to handle litigation not only of the European Patent with Unitary Effect, but also for conventional European Patents (the latter unless the patentee has opted out). The UPC will settle disputes regarding infringement, revocation, declarations of non-infringement and SPCs, for all of the member states that have signed the UPC agreement. The UPC will be seated in Paris, and have thematic sections in London and Munich for specialized technology areas. Further to this, there will be a number of local and regional divisions of the Court spread out across the member states. With the UPC, the patentee, or alleged infringer will no longer have to litigate in each national court of interest with the various national procedures and language regimens. Thus it is foreseen that costs for litigation will be considerably lower. Moreover, the UPC has a clear objective that the time limit from the filing of a claim to when a decision is given by the Court shall be no more than 12 months and this entails that the majority of the proceedings will be based on a written case.

The decision given by the Court will apply in all the member states in which the European patent has unitary effect. This means that there is only need for the patentee to pursue one process against an alleged infringer in all of the member states, but also that the patentee stands the risk of losing the entire patent following a revocation.

[1] http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001

[2] https://www.epo.org/news-issues/news/2015/20150624.html