Europe is moving to a unitary patent and a unified patent court on June 1, 2023. This is a significant change that will add yet another way to maintain and enforce patent rights in Europe and is important to understand if you have a patent portfolio in Europe.
Currently, patent protection in Europe can be obtained through either a national patent, filed directly with a particular country’s patent office, or through a patent filed with the European Patent Office (EPO), and then validated into all the countries where patent protection is desired. The national patent or the validated patent can be enforced through a particular country’s court system. There are a diversity of rules, fees, court systems, etc. in different countries in Europe, which means that patent enforcement is not uniform across the continent.
But starting in June, there will be an option to obtain a single European Patent with Unitary Effect (i.e., the Unitary Patent) which can be enforced in countries that have ratified the agreement for the Unified Patent Court (UPC). Currently, 17 countries have ratified the necessary agreements and will participate in the Unitary Patent when it starts: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. Other countries are expected to ratify the agreement and join; this can be done at any time. The United Kingdom and Spain are not currently participating.
This Unitary Patent will then be maintained through payment of fees directly to the EPO, which may be cheaper, over time, than the fees for national patents. The UPC will have jurisdiction over Unitary Patent enforcement and revocation (i.e., it will be a single court with the power to revoke a Unitary Patent and all its rights). Once this system starts, at the EPO, the default will be grant of a Unitary Patent and applicants must opt out if this is not desired. In the interim transitional period, starting March 1, the EPO is allowing for early requests for Unitary Patent protection on applications that may grant prior to the June 1 date. Of course, the current validation procedure is still available if a Unitary Patent is not desired.
Also, a decision whether to opt out existing granted European patents from the UPC’s jurisdiction is required. This opt out can be performed starting on March 1, and running for a three month “sunrise period” to June 1, after which the UPC will begin operations. However, the opportunity to file an opt-out request will remain available for at least 7 years from the start date of the UPC. The advantage of opting-out is that any opted-out patent will not be at risk from a central revocation attack in the UPC.
This system is new and untested, with many issues that must be worked out.
Moving forward, patent protection in Europe may be obtained through a combination of national patents, validated patents through the EPO, and unitary patents. There are pros and cons of each. For example, countries where patent protection is desired need to be assessed (e.g., if protection is only required in a small subset of countries, such as Germany and United Kingdom, then the Unitary Patent may not make sense) and the risk of invalidation of all patents rights in Europe in a single action may be an unacceptable risk for certain valuable inventions. Thus, the Unitary Patent may not make sense for pharma or biotech related patents but may make sense for retail related patents. In other technologies, in-house counsel may consider the Unitary Patent to streamline the patent process in Europe by reducing administrative costs and patent fees.