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THE EUROPEAN UNITARY PATENT AND THE UNIFIED PATENT COURT - THE BASICS

THE EUROPEAN UNITARY PATENT AND THE UNIFIED PATENT COURT - THE BASICS

This information is available in Chinese.

What is the ‘Unitary Patent Package’?

The unitary patent ‘package’ which has been approved by the EU Council and parliament consists of:

  • the creation of a Unitary Patent (and accompanying translation regime); and
  • the creation of a Unified Patent Court.

The Unitary Patent will be a European patent, granted by the EPO, having ‘unitary effect’ across all of the participating countries. It will be a single, indivisible, right – like a CTM or RCD.

The Unified Patent Court will provide, for the participating countries, a centralised forum for the litigation of European patents, including the new Unitary Patents.

Which countries will be covered by the Unitary Patent?

26 out of the 28 EU countries are participating in the unitary patent scheme. These are listed below:

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

Croatia acceded to the EU on 1 July 2013, after the agreement was signed, and has not yet signed up, but could do so later.

The unitary patent will cover all of the participating countries above that have also ratified the UPC Agreement at the time of requesting the unitary patent.  These are known as the Contracting Member States.  At June 2017, the countries that have ratified the UPC Agreement are given below.  In addition, the United Kingdom and Germany must ratify the UPC Agreement and so will be covered by the unitary patent when it becomes available.

Austria Italy
Belgium Luxembourg
Bulgaria Malta
Denmark Netherlands
Finland Portugal
France Sweden

Which countries are participating in the Unified Patents Court?

The same 26 countries have agreed to participate in the Agreement on a Unified Patent Court. Decisions of the Unified Patent Court will affect unitary patents and European patents in the countries that have ratified the UPC Agreement (i.e. the Contracting Member States).

What about Spain?

Spain has not signed up to the unitary patent package, but in principle they could join at any time.

What about the other EPC countries?

Countries who are Member States of the EPC, but who are not in the EU (for example, Switzerland and Norway) are not eligible to join the Unitary Patent or Unified Patent Court.

European patents granted by the EPO will still cover these countries, but they will need to be validated, maintained, and enforced separately in each of them, as now.

How do I get a Unitary Patent?

A European patent application will be filed at the EPO in the usual way.

When the application is granted, the applicant will then be able to choose whether or not the resulting European patent should have ‘unitary effect’ for the Contracting Member States.

It will still be possible, as an alternative to unitary protection, to validate separately in any or all of the Contracting Member States, as now.

How much will it cost?

The cost of filing and prosecuting the European patent application at the EPO should be the same as at present.

The renewal fees for the unitary patent have been set and are given in the table below. They represent about four times the average renewal fee for a single country.

Year
UP renewal fee proposal (Euro)
Year
UP renewal fee proposal (Euro)
11 1460
 2 35 12 1775
 3 105 13 2105
 4 145 14 2455
 5 315 15 2830
 6 475 16 3240
 7 630 17 3640
 8 815 18 4055
 9 990 19 4455
10 1175 20 4855

Therefore, for applicants who usually validate their European patents in only a few countries (e.g. only in the UK, France and Germany), the unitary patent may not represent good value.

During a transitional period, there will be a requirement to translate the whole text of the unitary European patent into at least one other language, which will add to the cost.

However, in the long run it is intended that machine translations will make the patent automatically available in all EU languages, and so there will be no need for the patentee to provide any translations.

The transitional period will last until the quality of machine translations is deemed to be good enough for this purpose, up to a maximum of 12 years.

What is the purpose of the Unified Patent Court?

At present, European patents must in principle be litigated separately in each country where they have effect. For example, a decision by a UK court on the validity or infringement of a particular European patent currently has no effect in Germany.

Such ‘parallel’ litigation increases costs for the parties and occasionally results in inconsistent decisions from the different national courts, which is undesirable.

The countries signed up to the Unified Patent Court have all agreed to transfer jurisdiction over European patents and SPCs from their national courts to a single, centralised court.

This should reduce the amount of parallel litigation and increase legal certainty, since decisions on infringement or validity of European patents will be made by a single court and will then have effect in all participating countries.

What will be litigated in the Unified Patent Court?

Any litigation involving the new Unitary Patent will be conducted in the new Unified Patent Court.

Within the Contracting Member States, the Court will also have exclusive competence to decide on matters of infringement and validity relating to ‘classical’ European patents (i.e. not having unitary effect) and also on matters relating to Supplementary Protection Certificates (SPCs) granted on these patents.

So, once the Agreement enters into force, an action for revocation of an EP(UK) patent, for example, will be brought before the Unified Patent Court, not before a UK court.  Similarly, an action for infringement of a European patent in Germany will also be brought before the Unified Patent Court.

Decisions of the Unified Patent Court will then have effect across all Contracting Member States.

For a transitional period (initially 7 years, extendable on review) owners of European patents will be able to ‘opt-out’ of the unified system and continue to litigate their European patents in the national courts.  Patents which have been “opted out” will stay opted out for their whole term, unless the patentee withdraws their opt out (which they can do at any time).

The national courts in the individual countries will continue to have jurisdiction over national patents, (i.e. granted by the national patent offices, not the EPO).

Where will the Unified Patent Court be?

The first instance Court will be split into local and regional ‘divisions’ (to be set up by the Contracting Member States) as well as a Central Division.

In general, the Central Division will be responsible for most cases relating to validity, whereas infringement actions will generally occur in the local divisions.

The Central Division will be based in London (for Life Sciences and Chemistry subject matter), Paris (for Physics and Materials subject matter) and Munich (for Mechanical and Engineering subject matter).

The Court of Appeal for the Unified Patent Court will be situated in Luxembourg.

When is all this going to happen?

The package will come into force when the UK, France and Germany, plus at least ten other participating states have ratified the Agreement. At June 2017, only the UK and Germany need to ratify the Agreement for the package to come into force.

However, there have been significant delays in the ratification process due to various political activity, particularly in 2016 and 2017.

It is currently expected that the package will come into force no earlier than the start of 2018, and possibly later.

This information is simplified and must not be taken as a definitive statement of the law or practice.