There have long been attempts to introduce a single patent covering all of Europe, but these have historically suffered from disagreements over language requirements. However, following a series of new agreements over the last few years, it seems that the introduction of a unitary European patent is set to become a reality, also bringing with it a new Unified Patent Court. Below we outline some of the key features of the proposed system and the new opportunities it will introduce for patent applicants.
What is the Unitary Patent?
A Unitary Patent will be a single patent providing uniform protection across all participating EU Member States. This means that the patent can be enforced across the EU in a single infringement action, and kept in force by payment of a single annual renewal fee. On the other hand, it will be possible for third parties to have a Unitary Patent revoked across all of the participating EU Member States by filing a single revocation action, if the patent is found to be invalid.
Although the unitary patent will eventually cover most, if not all, EU Member States, some countries such as Spain and Poland are not currently participating in the system. Moreover, it is likely to take some time before the legislation is ratified in all of the participating countries, and the system may cover as few as 13 countries when it initially comes into operation.
How will the Unitary Patent differ from a European patent?
Currently, the European Patent Convention (EPC) provides a centralised procedure for obtaining European patents. Under the existing system, a European patent application filed at the European Patent Office (EPO) gives applicants the option to protect an invention in one or more of the 38 European countries that are contracting states of the EPC.
Once a European patent is granted by the EPO, it is necessary to ‘validate’ the patent on a country-by-country basis in each of the individual countries in which patent protection is required. In practice, this requires registering the granted European patent with national Patent Offices, and in some cases filing translations, and results in a bundle of national patents rather than a single patent that can be renewed and enforced centrally. Following grant of a European patent, renewal fees (required to keep the patent in force) are payable to each national Patent Office in which the patent has been registered.
The resulting national patents can be renewed or allowed to lapse separately in each country, depending on the coverage required during the lifetime of the patents. Likewise, any court proceedings to enforce the patent against an infringer, or any action by third parties to have the patent revoked, must take place separately before the national court of each country.
By contrast, the single Unitary Patent will cover those EU Member States that have chosen to participate, although it will not cover non-participating EU Member States, nor EPC Contracting States that are not members of the EU. A single renewal fee will be payable to keep the Unitary Patent in force across all the participating states, although this also means that the proprietor will not have the option of reducing the number of countries (and the corresponding level of renewal fees) during the lifetime of the patent.
How will an applicant obtain a Unitary Patent?
The new Unitary Patent system will in fact still make use of the existing European patent application procedure, and a Unitary Patent will start life as a conventional European patent application which is examined and granted by the EPO under the current system. However, once the European patent application is granted, the applicant will have one month to register the patent as having unitary effect in the participating states. This will involve filing a translation of the complete specification into the language of another participating Member State, although in the longer term it is envisaged that this translation requirement will be superseded by the provision of high quality machine translations of the patent into the official languages of all participating states at no cost to the applicant.
Will it still be possible to obtain a European patent under the existing system?
Yes, there are no plans to replace the existing European patent system. The Unitary Patent will be an additional option at the grant stage, and will run in parallel with the current system. This means that at the grant stage, the applicant will have the choice of pursuing unitary protection in the participating states, or validating the European patent in some or all of those countries individually. In fact, even where the applicant opts for a Unitary Patent, it will still be necessary to validate the European patent in the usual way if protection is required in non-participating countries, such as Spain, or in any non-EU states which are covered by the European patent. However, it is important to note that if the applicant opts for unitary protection, it is not then possible also to validate the European patent in countries which are already covered by the resulting Unitary Patent.
Which countries will it cover?
Of the 27 EU Member States at the time the relevant legislation was enacted, only Spain and Italy initially declined to participate, with Spain challenging the legality of the system itself at the Court of Justice of the EU (CJEU). Spain’s challenge was finally rejected by the CJEU in May 2015, and Italy has subsequently signed up to the Unitary Patent system.
There have also been doubts about Poland’s participation, following its initial agreement, and it is currently taking a ‘wait and see’ approach with no immediate plans to progress its participation. However, Poland is likely to face pressure to join once the new system has come into effect. The list of possible participants has increased further with Croatia joining the EU on 1 July 2013, although it has yet to sign up to the relevant agreements which will allow it to be part of the Unitary Patent system.
In the initial stages after it comes into effect, the number of countries covered by the Unitary Patent will increase as the legislation is ratified by more of the participating countries, and possibly as more countries join the EU and the Unitary Patent system. The Unitary Patent will not come into effect until 13 states (which must include the United Kingdom, France and Germany) have ratified the legislation.
How much will it cost?
One of the potential benefits of the Unitary Patent for applicants is the ability to obtain patent protection across a large number of countries without the need to validate a European patent in each country individually, with the associated costs and translation requirements for each country. This could result in significant cost savings, particularly for applicants who routinely validate their European patents in a large number of the available European states. Similarly, only a single annual renewal fee will be payable in respect of the Unitary Patent, whereas currently renewal fees must be paid in each of the individual countries in which a European patent is validated.
In June 2015, it was agreed that the single renewal fee for the Unitary Patent would be set at a level corresponding to the sum of the renewal fees currently payable for the four countries in which European patents are most frequently validated, namely Germany, France, UK and the Netherlands. No reductions in the renewal fees will be provided for small entities or SMEs, as had initially been proposed.
It remains to be seen whether this fee level will be low enough to encourage widespread use of the system among the large proportion of applicants who validate in only a handful of countries, or whether it will mainly benefit the minority of applicants who already validate in a very large number of countries. The EPO has indicated that adoption of the Unitary Patent system by small entities will be monitored, and further measures to encourage use by such entities may be implemented if necessary.
When will it come into effect?
The Unitary Patent system will come into effect once a minimum of 13 countries (which must include the UK, France and Germany) have ratified the agreement to implement the new Unified Patent Court, which is the Europe-wide court being established to hear cases involving Unitary Patents. As of June 2016, ten countries have ratified the agreement, including France. It is expected that several other countries will ratify during 2016, and that the Unitary Patent system will come into effect in early 2017 with well over the required minimum of 13 states taking part.
The Unitary Patent system is set to provide an additional option for applicants at the point where a European patent application is granted. In some cases, this will provide a straightforward and cost effective way of obtaining patent protection across a large number of European countries. It remains to be seen which applicants will be encouraged by the proposed fee levels to make use of the Unitary Patent system, and which will find that continuing to validate European patents in a selection of countries under the existing system will prove to be the best strategy.