On 19 February 2013, an international agreement establishing a Unified Patent Court was signed by representatives of 24 EU Member States.  This follows the prior approval by European Parliament in December 2012 of the EU Regulation that gives effect to the European patent with unitary effect.   With the passing of these milestones, the introduction of a unitary patent and Unified Patent Court looks increasingly like becoming a reality.  

This article summarises the current system for obtaining and enforcing patents in Europe and the key features of the proposed unitary patent and Unified Patent Court.  The implications of the proposed changes for patent applicants are also briefly considered.

  1. The current system

The European Patent Convention provides a centralised procedure for obtaining European patents.  Under the current system, a European patent application filed at the European Patent Office (EPO) gives applicants the option to protect an invention in one or more European countries that are members of the European Patent Organisation. Successful completion of a centralised search and examination procedure conducted by the EPO leads to issuance of a “European patent”.   

It is then necessary to “validate” any patent granted by the EPO on a country-by-country basis in each of the individual EU 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 those national Patent Office(s) in which the patent has been registered.   

Patent litigation in Europe (for example to contest infringement and/or validity matters) is currently conducted before national courts.  National courts may refer questions concerning the interpretation of EU law to the Court of Justice of the European Union (CJEU) in Luxembourg.  However, the CJEU does not issue decisions in favour of a particular party to the litigation.  

2. Why change?

The need for post-grant patent validation and renewal fee payment at a national level results in increased costs for applicants than would otherwise arise if a single, EU-wide patent were available.  

Moreover, the absence of a unified EU Patent Court means that parallel litigation proceedings concerning the same patent often need to be conducted in more than one European country.  This process is complex, costly and often unpredictable in terms of outcome.   Although clearly undesirable, it is not uncommon for national patent courts to reach different decisions concerning validity and/or infringement of the same patent based upon their own differing interpretations of EU law.  

3. The proposed system

Under the proposed system, the filing and examination procedure before the EPO will remain unchanged.  However, once a patent has been granted, the proprietor may proceed with one of the following options:

  1. A European patent with individual territorial protection in the designated Member States (as available under the current system); or (ii) A unitary European patent with unitary territorial protection in the 25 Member States participating in the unitary patent cooperation scheme (excluding Italy and Spain); or
  2. A combination of (i) and (ii), by requesting a European patent in a selection of those EU member states not participating in the unitary patent cooperation scheme.  

The unitary European patent will therefore be an optional “adjunct” to traditional national and European patents.  Once granted by the EPO, a unitary European patent will be automatically valid throughout all participating EU Member States, thereby avoiding the need to validate the patent on a country-by-country basis.  

Key provisions of the implementing Regulation for the unitary patent provide that:

  • A unitary patent shall provide uniform protection and shall have equal effect in all participating Member States.  As such, it may only be limited, transferred, revoked or lapse in respect of all the participating Member States.
  • The unitary patent will confer on its proprietor the right to prevent any third party committing acts against which that patent provides protection throughout the participating Member States in which it has unitary effect (subject to applicable limitations).
  • The European Patent Office (EPO) shall be solely responsible for administering requests for unitary patents, and shall collect and administer renewal fees for such patents.
  • Renewal fees for unitary patents shall be due in respect of the years following the year in which the mention of grant of the unitary patent is published in the European Patent Bulletin.  The quantum of fees is yet to be decided, although the Regulation does require that the level of fees should take into account the needs of small and medium sized enterprises (SMEs) to facilitate and foster the competitiveness of European businesses.  

The Unified Patent Court will comprise a Court of First Instance, a Court of Appeal (based in Luxembourg) and a Registry.  The Court of First Instance will comprise a Central Division based in Paris with further branches in London and Munich.  Each division of the court will have responsibility for different areas of technology as follows: London (chemistry and life sciences, including pharmaceuticals, biotechnology and medical devices); Munich (mechanical engineering); and Paris (remaining technologies).   

4. What’s next?

The implementing Regulation for the unitary patent entered into force on 20 January 2013.  The Agreement on a Unified Patent Court will enter into force once ratified by at least 13 participant EU Member States, including France, Germany and the UK.  Requests for unitary patents may be filed from 1 January 2014 or the date of entry into force of the Agreement on a Unified Patent Court, whichever is later. 

Although the legislative framework for the unitary patent and Unified Patent Court are now in place, considerable further work is needed to finalise the accompanying regulations relating to costs and the Rules of procedure for the new Court.

Although unlikely to be used by all in practice, implementation of the unitary patent is to be welcomed to the extent that it will provide applicants with an alternative means by which to obtain patent protection in Europe.