After forty years of negotiations, the majority of the European Union (EU) member states and the European Parliament have now agreed to create a Unitary Patent System (UPS) and Unified Patent Court (UPC). The UPS and UPC are targeted to go into effect in early 2017, but the associated agreement must first be ratified by the United Kingdom (UK), France, and Germany, and at least ten other EU member states. As of January 2016 Austria, Belgium, Denmark, Finland, France, Luxembourg, Malta, Portugal and Sweden have ratified. 

The UPS creates a European patent with unitary effect (UP), which will be examined and granted by the European Patent Office (EPO) like a classical European patent, but enforced by a new, centralized court system, the Unified Patent Court. 

Once the UPC takes effect, it will run in parallel with the current European patent system (in which granted European patents are handled as national patents by the courts of the member states). For a transitional period, currently set at seven years and which is extendible by a further seven years up to a total of fourteen years, 'classical' European patents can be enforced and challenged in both the UPC and, for individual designations, national courts. At the end of this period classical European patents and UPs can only be enforced and challenged in the UPC and not the national courts. UPs can only ever be enforced and challenged in the UPC. 

Once the UPS comes into force, there will be four ways to obtain patents in Europe: (1) by filing in the national patent office of each country where protection is desired; (2) by filing in the EPO and selecting the current classical (national validation upon grant) option; or (3) by filing in the EPO and after grant selecting the UP option; or (4) by filing in the EPO and after grant selecting a combination of the current classical option for non-UPS states, and the UP option. 

Three Ways to Obtain Patent Protection in Europe’s UPS Countries

Once the UPS is in effect, there will be three ways to obtain patent protection in UPS signatory countries:

  1. Filing a national application with the national patent office of each country 
  2. Filing an application at the EPO and selecting the current national validation system after grant 
  3. Filing an application at the EPO and selecting the UP option after grant

Which option is best for a particular application may depend on a number of factors, some of which are listed in the adjoining table. One important consideration is where protection is desired. For example, the current patent office costs of obtaining and maintaining a European patent are considered to be roughly equivalent to those of filing three national applications. According to 2011 European Commission statistics, about one half of all EPO applicants validate in only three countries: the UK, France, and Germany. For those applicants, the costs of the UPS, which will be higher than a classical European Patent Convention (EPC) application validated in three countries, might be excessive. According to the same 2011 statistics, 90% of current EPO applicants validate in one or more of the following countries: the UK, France, Germany, Spain, and Italy. However, at present, Spain (and Croatia) has not agreed to participate fully in the UPS. Spain (and Croatia and Poland) has also not agreed to participate in the UPC.

Strategic Considerations

National Patents vs. Classical European Patents vs. Unitary Patents 

In determining whether to use the EPO or the national patent offices, it is helpful to consider the patent claim strategies as well as costs. For example, the EPO imposes severe fees and restrictions on applications having more than fifteen claims or more than one independent claim per category. National patent offices may have considerably fewer restrictions and/or lower fees on such applications. UPs which can cover up to 26 EU states will cost significantly less to maintain for the duration of the patent lifetime, compared to classical European patents validated in many states. There are also no validation fees and only one translation cost associated with the UP. 

Staying in or Opting Out of the Unified Patent Court 

Patent enforcement strategies should also be carefully considered. Applicants filing in the national patent offices will only be able to use current national enforcement systems, while applicants using the EPO will have more options. Both current EPO patent holders and EPO applicants who elect national validations may, at least initially, choose either the UPC or the national court systems for enforcement. Specifically, current EPO patent holders and EPO applicants choosing to validate nationally are allowed, as mentioned above, to opt out of the UPC and use the national courts over the lifetime of their patents. This avoids the risk of a central revocation action being filed after the 9 month EPO opposition period has passed. But they may opt back into the UPC at a later time during the patent lifetime (if no national court action has yet commenced) if the UPC becomes desirable for strategic reasons. For example, a patent holder might opt back into the UPC in order to attempt to obtain a preliminary injunction against an infringer that will be valid in several countries without having to file multiple suits. However, once they opt back in it will then be possible for other parties to file a claim (or counterclaim) for central revocation. UPs can only ever be enforced in the UPC and are also susceptible to a central revocation action. Overall, choosing the current EPO national validation route as opposed to the electing a UP during the transitional period might give applicants more flexibility in defence and enforcement.