After a decade of efforts, the age of the Unitary Patent in the European Union (EU) appears to be imminent. It is expected that in the second half of 2022, inventors will be able to obtain patent protection in all participating EU states by filing a single application with the European Patent Office (EPO), thereby building on European patents granted by the EPO under the European Patent Convention (EPC) rules. This change in the European patent system means obtaining patents on the continent will soon become much simpler and much cheaper.

Background of the Unitary Patent

In December 2012, European countries and the European Parliament agreed to lay the groundwork for creating a Unitary Patent protection system throughout all EU member states. The two EU regulations establishing the Unitary Patent system went into force on January 20, 2013. In February 2013, all EU member states except Poland, Spain, and Croatia signed an intergovernmental treaty to establish a Unified Patent Court (UPC) to govern and administer the new system.

However, the UPC Agreement, a cornerstone of the Unified Patent framework, has yet to come into force because the three EU countries with the most European patents in effect in 2012 needed to ratify the agreement. One of those countries – Germany – has yet to do so. As such, the UPC is in a preparatory phase initiated on January 19, 2022, that should last eight to ten months. During this time, it is expected that Germany will deposit its instrument of ratification of the UPC Agreement, which will then trigger a preliminary period of three to four months before the UPC Agreement comes into force.

The Unitary Patent Framework

A European patent granted by the EPO on or after the date the UPC Agreement enters into force will form the basis of a Unitary Patent. Therefore, an applicant must first obtain a European patent before the EPO registers a Unitary Patent.

To be eligible for a Unitary Patent, the European patent must have been granted with the same set of claims, and the applicant must file the request no later than one month after the publication of the grant in the European Patent Bulletin. If a patent owner does not request the unitary effect, the patent will remain a “classic” European patent.

After the UPC Agreement enters into force, the Unitary Patents will only cover the EU member states that have already ratified the agreement. Currently, the following 17 member states 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.

Although they are members of the EU, Spain and Poland have announced that they will not be parties to the UPC Agreement.  Additionally, as a result of Brexit, the UK is also no longer a party to the UPC Agreement. Outstanding ratifications will likely occur successively for Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, and Slovakia.

Key Features of the Unitary Patent System

Here are some key features to expect as the Unitary Patent system kicks into gear over the coming year:

• Single annual fee. Owners will be able to maintain a Unitary Patent by paying a single annual fee to the EPO.
• Translations ultimately not required. For a transitional period of at least six years, the application for unitary effect must be accompanied by an English translation of the description of the European patent if the patent is in French or German. If the patent is in English, it must include a translation of the description into any one of the languages of the EU. A translation will no longer be required at the end of this transitional period.
• Harmonized patent law throughout all participating countries. Unitary Patents will confer uniform protection since the substantive patent law in infringement cases has been harmonized in the Agreement on a Unified Patent Court.
• UPC to have exclusive jurisdiction but opt-out available during transition. The UPC will have exclusive jurisdiction over infringement claims and invalidity litigation concerning Unitary Patents, and any UPC decision will be controlling in all countries covered by the Unitary Patent. However, for a transitional period of at least seven years, litigation involving ‘classic’ European patents may be brought either before national courts or the UPC, at the claimant’s option. During this transitional period, “classic” European patent holders may exempt their patent from the UPC’s jurisdiction. This opt-out will no longer be allowed after the end of the transitional period.

If you have concerns about how these developments and upcoming changes will affect your European patent portfolio or plans on the continent, please contact the attorneys at The Dobrusin Law Firm.