With the launch of the Unified Patent Court, the European Patent Office will start granting Unitary Patents providing patent protection in all of the participating member states. This will reduce the burdens on applicants who wish to obtain protection across multiple countries in Europe as the formalities and maintenance fees due on such Unitary Patents will be significantly lower than the equivalent costs for maintaining protection via individual national patents.
1 Unitary Patent FAQ | Finnegan | Leading IP Law Firm | IP Updates | Finne… © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP IP UPDATE Unitary Patent FAQ 2022 With the launch of the Unified Patent Court, the European Patent Office will start granting Unitary Patents providing patent protection in all of the participating member states. This will reduce the burdens on applicants who wish to obtain protection across multiple countries in Europe as the formalities and maintenance fees due on such Unitary Patents will be significantly lower than the equivalent costs for maintaining protection via individual national patents. What is a Unitary Patent? A Unitary Patent is a single Unitary Patent right covering the member states that have ratified the Agreement on a Unified Patent Court, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden. It is expected that other EU countries (e.g. member states having signed but not yet ratified the Agreement on a Unified Patent Court) may also choose to join the Unitary Patent System. How do you get a Unitary Patent? 2 Unitary Patent FAQ | Finnegan | Leading IP Law Firm | IP Updates | Finne… © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Unitary Patents will be granted by the European Patent Office based upon any pending European Patent Applications which designate all of the countries participating in the Unitary Patent System. In practice, that is likely to include all pending European Patent applications with an effective filing date on or after 1 March 2007, the date on which Malta acceded to the European Patent Convention. As soon as the Unified Patent Court opens, whenever the European Patent Office decides that a European Patent Application is in order for grant and issues a proposed text for grant of a relevant patent application, applicants will be given the option of either obtaining a bundle of national patents in the participating member states or, alternatively, obtaining a single Unitary Patent in place of those national patents. Individual national patents will still continue to be issued for the other European Patent Convention countries such as UK, Spain, Poland, Switzerland, and Turkey. In addition to informing the European Patent Office of an intention to obtain a Unitary Patent, an applicant for a Unitary Patent must provide the European Patent Office with a translation of the application into English if the application was prosecuted in French or German, or into any EU language if the application was prosecuted in English. The translation must be filed with the European Patent Office within one month from the date of grant of the patent. Why would I want a Unitary Patent? The main reason for obtaining a Unitary Patent is cost. At present, if patent protection is required in many European countries, in many cases, the full application or the claims must be translated into national applications. Subsequently, renewal fees need to be paid to maintain granted patents in each country. Rather than having to obtain and file multiple translations into national languages, only a single translation of the application will be required—into English if the application was prosecuted in French or German, or into any EU language if the application was prosecuted in English. And indeed, this requirement is scheduled for review and may be dropped in 2028. Further maintained costs of a Unitary Patent will be much lower than the costs of corresponding protection maintained via a bundle of national rights, as illustrated in the graph below. In short, the costs of a Unitary Patent will be similar to the costs for obtaining and maintaining protection in four European countries. However, the scope of such patents will extend to more than 14 countries. 3 Unitary Patent FAQ | Finnegan | Leading IP Law Firm | IP Updates | Finne… © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Is there any reason not to obtain a Unitary Patent? Although the Unitary Patent provides a cheaper way of obtaining and maintaining broad patent protection in Europe, Unitary Patents are not without their drawbacks. Unlike national patents granted by the European Patent Office, there is no scheme by which a Unitary Patent can be opted-out from the jurisdiction of the Unified Patent Court. A Unitary Patent is a unitary right and will always be liable to revocation in a single court action. This vulnerability may make the Unitary Patent unattractive for highly valuable patents where, when compared to the value of a patent, the validation and maintenance costs are insignificant. Further, at present, 50% of European patents are only validated and maintained in the UK, Germany, and France, a pattern of validation and maintenance which is particularly common for electronic and mechanical patents. If that scope of protection is sufficient for commercial purposes, it will be cheaper to continue with that scope of protection which covers a broadly similar market size to that provided by the Unitary Patent, assuming all participating member states ratify the agreement—$10.3 trillion GDP (GB, DE, FR) versus $14.9 trillion GDP (Unitary Patent contracting member states). When will the first Unitary Patents be issued? The first Unitary Patents will be issued as soon as the Unified Patent Court officially opens for business. That will occur three months from the date on which Germany formally deposits its ratification document with the relevant authorities. The exact date when that is likely to occur is presently unknown, as the deposit is deliberately delayed until all of the necessary preparations for the opening of the new Court have been established. Formal ratification is expected to occur sometime later this year, which will mean that Unitary Patents will probably start to be granted either towards the end of 2022 or early in 2023. Can I delay prosecution of a European Patent Application in order to get a Unitary Patent? Yes. The European Patent Office has announced a scheme to enable applicants to delay grant of patent applications until the Unitary Patent comes into operation. This scheme will apply during the three-month “sunrise” period between the date on which Germany formally ratifies its participation in the Unified Patent Court and the date when the Court opens. If applicants wish to delay prosecution of applications before the operation of the formal scheme, there are various means by which this delay can be achieved, and they should contact their prosecuting attorneys directly to discuss how this might be done. What is the scope of a Unitary Patent? A Unitary Patent will provide patent protection across all participating member states who have ratified the agreement before the Unitary Patent in question has been granted. At present, Germany, France, Italy, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, Latvia, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden have confirmed their participation in the Unitary Patent scheme. Further, European member states are expected to ratify the agreement in due course. Are Supplementary Protection Certificates (SPCs) available for Unitary Patents? It will be possible to obtain SPCs based on a Unitary Patent and the European Union is currently consulting on whether a new unitary SPC should be made available. How much will it cost? The formalities and costs for obtaining a Unitary Patent will be significantly lower than the costs for obtaining and maintaining equivalent protection through European national patents granted by the European Patent Office. 4 Unitary Patent FAQ | Finnegan | Leading IP Law Firm | IP Updates | Finne… © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Up until grant, the application process for obtaining a Unitary Patent will be identical to that for obtaining European national patents from the European Patent Office. When the European Patent Office approves a European patent application for grant, a proprietor will be given the option to obtain a Unitary Patent in place of individual national patents in the participating member states. The applicant will then have to deposit a translation of the patent application with the European Patent Office. That translation will have to be in English if the European patent application was prosecuted in French or German or in an EU national language if the application was prosecuted in English. Maintenance fees will be due on the Unitary Patent. These fees have been set at an equivalent level to the current costs of maintaining patent protection in four countries. How can I enforce a Unitary Patent? The Unified Patent Court will have exclusive jurisdiction over the enforcement of Unitary Patents. What strategic issues should I consider? The key strategic issue to consider with regards to the use of the Unitary Patent relate to balancing reductions in the costs for obtaining broader geographical patent protection in Europe against the risk of losing that protection in a single invalidity action. The costs for obtaining Unitary Patent protection will be significantly lower than the costs for obtaining equivalent protection via European national patents because of significant reductions in translation costs. In contrast to the existing system in which multiple translations into national languages are required, only one translation of the application will be required—that translation will need to be into English if a patent application is prosecuted before the European Patent Office, or into any EU language other than English if a patent application is prosecuted before the European Patent Office in English. Often that translation will be required in any event for other reasons. For example, if a patentee wishes to obtain patent protection in Poland or Spain (neither of which is participating in the Unitary Patent system), translations into Polish and Spanish will be required for obtaining patent protection in those countries, which can then be re-used when obtaining a Unitary Patent. The maintenance fees for a Unitary Patent will also be considerably lower than the costs for maintaining European national patents in multiple countries, as the renewal fees for the Unitary Patent have been set at the equivalent cost of renewal fees for four countries, rather than the 17 countries which have already indicated that they will participate in the Unitary Patent. However, Unitary Patents will not be suitable for all applicants. At present, around 50% of European patent applications are maintained after grant only in the UK, Germany, and France. The combined market size of these three countries is approximately three-quarters the size of the combined market protected by a Unitary Patent. If such a scope of protection is sufficient, then continuing with such an approach will be cheaper than obtaining protection via the Unitary Patent route, as no translation costs will be incurred beyond the costs of the claim translations required as part of the European Patent Office grant procedure. In addition, maintenance fees will also be lower. A second group of applicants for whom Unitary Patent protection may not be suitable will be applicants who are concerned about the risk of central invalidation of patent rights. It will not be possible to opt a Unitary Patent out of the jurisdiction of the new Unified Patent Court. As such, all Unitary Patents will be liable to a risk of central revocation throughout the lifetime of the patent. In contrast, optouts from the jurisdiction of the Unified Patent Court will be available for European national patents granted by the European Patent Office for a transitional period which will last at least for the next seven years and may be extended further for another seven-year period. For valuable patents, such as many biotech and pharma patents where the costs of validating and maintaining patent rights in individual jurisdictions are insignificant compared to the potential loss arising from central revocation, national European patents, and opt-outs from the jurisdiction of the Unified Patent Court will therefore be the preferred course of action. 5 Unitary Patent FAQ | Finnegan | Leading IP Law Firm | IP Updates | Finne… © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP For additional information, read our Unified Patent Court FAQ and Strategic Considerations for Opting in or out of the Unified Patent Court. 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