An Introduction to the Unitary Patent & the Unified Patent Court

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Come 2023 and European Union patent landscape will witness a major transformation in the form of the Unitary Patent and the Unified Patent Court. This new system promises to make it easier and quicker for companies to obtain patents in the EU. It is especially deemed favorable for boosting the IP- intensive goods and services sector as well as promoting investment in innovation. Below we throw light on the meaning, benefits, and challenges of this long-awaited phenomenon.

Table of Contents

What is the Unitary Patent & Unified Patent Court?

Currently, the European Patent Office (EPO) issues patents centrally but they have to be validated and maintained individually in each country. With the advent of the Unitary Patent, the patent protection will automatically be available in 25 EU countries once granted by the EPO. The pre-grant process remains the same, only the effectiveness of the patent extends to more countries.
The Unified Patent Court (UPC) will be a central body dealing with the infringement and validity issues of the Unitary and European Patents. It will have the authority to decide on revocation actions and counterclaims, provisional measures and injunctions, actions for declaration of non-infringement, private prior-use actions and actions for damages or compensation regarding UPs. At present, the respective national courts of each country are responsible for ruling on the above matters.

Unitary Patent Guide

Based on the revised European Patent Convention (EPC 2000), the Unitary Patent Guide guides companies and inventors with an outline of the UPC patent application process. It does not go into great detail about the issues or specifics of the process but rather offers advice to smoothen the process through various stages.

Transitional Measures

In order to assist applications that have reached the final phase of the grant procedure the EPO has introduced two transitional measures for the early adoption of the UPC patent.
The first is for the early request of the unitary patent. The applicant will be notified via communication by the EPO with the choice of being granted a Unitary Patent ahead of its formal implementation. If the applicant is interested in the offer, they must pay the fee for the grant and publishing and translate the claims into two official languages of the EPO. Applicants may file for a unitary effect online by filling out Form 7000 available on the EPO website. Early requests for unitary effect can only be submitted as of 1 January 2023.
The second is for a request to delay the decision to grant a European patent. A Unitary Patent may only be granted on or after the date of application of Regulation (EU) No 1257/2012. In order to make the applicant eligible for a Unitary Patent, the EPO will delay the issuing of the patent to a date that is on or immediately after the commencement of the Unitary Patent system.

Process and Cost of Applying For a Unitary Patent

The applicant must first obtain a European patent before filing for a unitary patent. Upon the grant of a European patent, the applicant may request a unitary effect at the EPO. The timeline for filing the request is within one month of the mention of the grant in the European Patent Bulletin.
An annual renewal fee of 500 Euros is applicable to maintain a Unitary Patent, payable to the EPO. Since a unitary patent does not require to be validated in member countries, its overall cost too would be much less as compared to a classic European patent.

Translations and Unitary Patents

Translations for applying for Unitary Patent will only be required for a period of 6 years (extendable up to 12 years). The following are the translation requirements:

  • If the original language of filing is French or German, then the application will have to be translated into English.
  • If the language of proceedings is English then it will have to be translated into any official language of the EU.

The EPO has also introduced a compensation scheme that will cover the cost of translation for SMEs, non-profits, universities, and natural persons in the pre-grant stage. Once the transitional period expires, there will be no need for translations to obtain a Unitary Patent.

Structure of the Unified Patent Court

The UPC will comprise three wings- a Court of First Instance, a Court of Appeal, and a Registry. The Court Of First Instance will be headquartered in Paris with local and regional divisions in other countries. The seat of the Court of Appeals will be in Luxembourg.

Advantages of the UP and UPC

The Unitary Patent and the Unified Patent Court promise several benefits for patent seekers in the EU. Some of them are:

  1. Simplified Procedures: While the general guidelines and requirements for applying for a patent with the EPO remain the same, the Unitary Patent will make it easier for companies seeking a larger geographic scope in the EU. This is because the Unitary Patent will grant them automatic validity in member countries without undergoing the complex procedures involved in individual applications. The EPO will offer full services with a simple registration.
  2. Cost Effective: Validation requirements vary from country to country and often involve a hefty fee. By applying for a Unitary Patent, companies can curtail these costs and pay a fixed amount to the EPO. The renewal fee too has been set at a very competitive rate.
  3. No Translations: The Unitary Patent will do away with post-grant translations after a 6-year period. This will save costs and resources involved in the translation process.
  4. No Parallel Litigation: The Unitary Patent Court will provide a central forum for matters related to the enforcement and validity of patents in member countries, thus eliminating the costly legal battles in individual countries.
  5. Expedited Judgements: With a harmonized case law, the UPC will be able to offer quicker judgments (decisions, injunctions and damages) which will have an immediate effect in member countries.

Apprehensions of the New System

Every transition from the status quo is subject to challenges and risks, and the Unitary Patent system is no exception. Summarized below are the trepidations associated with the new system:

  1. Centralization: While centralizing the patent system has its benefits as listed above, it is not without drawbacks. Since patents will now be enforced centrally, companies wishing to operate in one country only will also have to avail of the protection of the Unitary Patent. This is because if a competitor owning a unitary patent challenges the validity of a national patent, and succeeds, then the national patent will cease to exist. This was not the case earlier as a successful challenge to a patent in one country had no effect in other states.
  2. Fixed Scope: Since the UP has not been ratified by all countries of the EU, its geographic coverage is yet limited. Also, the patent protection for the early adopters of the system will be confined to the member states that were signatories at the time of the patent grant, even if new members join the UP.
  3. Flexibility: The new system will significantly restrain the flexibility of start-ups and small firms which will now not be able to structure their portfolios per the countries they seek to operate in. With the classic European patent, companies enjoyed the flexibility to tweak their claims or choose not to launch in a country where there was a risk of infringing a national patent. This freedom will no longer be available once the Unitary Patent system comes into force.

Conclusion 

The Unitary Patent is soon to turn into a reality in Europe. Being a new and untested system, there is uneasiness in the market regarding its true nature. But since there is no avoiding it, companies must take the crucial decision of analyzing their patent strategies to decide whether they want to opt for the Unitary Patent or stick to the current system. This decision will depend on various factors like geographic presence, costs v/s coverage, the strength of the patent, etc. It is best to consult a knowledgeable firm to determine the direction your business should steer in the given scenario.

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