THE EUROPEAN PATENT WITH UNITARY EFFECT AND THE UNIFIED PATENT JURISDICTION COMES INTO FORCE.
Strength in Numbers: New Avenues for Patent Protection in Europe
Julien Fleurance1 et Camille Laliberté2
ROBIC, LLP
1Partner and Patent Agent and 2Articling student
Introduction
Winds of change are blowing across the European Union (EU) in the field of patent protection. Almost a decade after its signature[1] and following the upheaval caused by Brexit, implementation of the Agreement on a Unified Patent Court (UPC Agreement) and the Regulations establishing the European Patent with Unitary Effect has been announced. The coming into force of these rules is expected to take place on June 1, 2023, and will introduce new patent protection strategies under which European patents can have “unitary” effect across EU states. On that date, the Unified Patent Court will also become part of the European legal landscape. The initiative surrounding the creation of these new rules comes from an enhanced cooperation agreement signed by 25 EU Member States (only Spain and Croatia have not signed).
This article provides an overview of the existing options and the upcoming changes to patent protection in Europe. Our review of the advantages and disadvantages of the unitary patent and the new unified patent jurisdiction will also highlight, for future and current patentees, the impacts of these changes on patent protection in the Old Continent.
How inventions are protected in Europe today
Currently, two different options exist to protect an invention by patent in Europe: one or multiple national patent applications can be filed with the competent national offices, and/or a patent application can be filed with the European Patent Office (EPO) to obtain a European patent that will be validated in countries of interest.
- National patents
A national patent is obtained by filing a patent application with the national intellectual property office of the given country. This country-by-country filing mechanism is often contemplated in order to secure patent protection in only a few European countries (or sometimes even in only one European country). The filing requirements vary from one office to another, and if multiple national applications are filed, independent examinations will be conducted in the respective selected countries. Although patentability criteria in general are globally harmonized between the different national jurisdictions of the EU Member States, the scope of protection provided by national patents may differ from one country to another, for example because of prior art documents identified by the national offices.
- European patent
A European patent application, drafted in one of the three EPO official languages (French, German and English), is filed directly with the EPO, which is responsible for carrying out a single, centralized examination of the application. The granting of a European patent gives access to all member states of the European Patent Convention (EPC). As of today, the EPC has 39 member states: all EU Member States are members of the EPC, along with other European countries that are not members of the EU, such as the United Kingdom, Switzerland and Turkey. Currently, the examination of a European patent application takes about two to four years from the date of filing with the EPO.[2]
Once granted, the European patent must be “validated” and maintained in force in each of the countries chosen by the patentee on the basis of the latter’s commercial interests. The validation and maintenance of the national validations of the European patent involves, among other things, the payment of annual maintenance fees and translation requirements that vary between countries. Once granted, the European patent has, in each of the validation countries, the same effects as a national patent, and the national validations of the European patent exist independently of each other.
Implementation of the European patent with unitary effect
The European patent with unitary effect, also called “unitary patent,” is a European patent granted by the EPO under the current rules and procedures of the EPC, and is given unitary effect. Unitary effect implies uniform protection of the rights and limitations granted by the unitary patent for all EU Member States participating in the unitary patent.
Ultimately, the granting of a unitary patent will provide protection in all 25 EU Member States participating in the unitary patent system. To date, seventeen countries have ratified or are in the process of ratifying the UPC Agreement, namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
- Obtaining a unitary patent
To obtain a patent with unitary effect, it will be necessary to first obtain a “classic” European patent and then file a request for unitary effect with the EPO.
Following the notice of grant of the European patent, the patent owner will have one month to submit, in writing and accompanied by the required translation of the patent, a “request for unitary effect.” No fee will be charged.
The translation requirements for the unitary patent are less stringent than for national validations of a European patent. For a transition period of at least six years, the unitary patent, if drafted in French or German, will have to be translated into English, and if drafted in English, will have to be translated into any official language of the EU.[3] Following the transition period, unitary patents will not have to be translated.
Once the patent is granted, the patentee will have to pay an annual maintenance fee to keep the unitary patent protection. It will be a single annual fee, paid to the EPO, equal to the combined annual fees for the four main countries of the EU. Unitary patent holders will therefore no longer be subject to the current system of multiple annual fees paid to the different national offices where the European patent is validated.
- Possible combination?
It will also be possible to combine a unitary patent with national validations of a “classic” European patent. An applicant will be able to register a European patent as a unitary patent in addition to having the same patent validated in other EPC Member States not covered by the unitary patent.[4] However, “double protection” will not be possible for a given state. For a State covered by the unitary patent, “additional” protection by a national validation of the European patent cannot be granted.
- Effective date and applicable transitional measures
Unitary effect will not be available for existing European patents.
An application for a patent with unitary effect may be filed for any European patent granted on or after the effective date of the applicable regulations, i.e., under the current schedule, June 1, 2023.
In anticipation of the coming into force of the unitary patent, the EPO has introduced two transitional measures to facilitate the use of the unitary patent for European patent applications that have reached the final stage of the examination; those measures are available as of January 1, 2023.
One transitional measure allows for the filing of an early request for unitary effect before the new system becomes operational. By submitting an early request to the EPO, the applicant will be able to obtain unitary effect as early as June 1, 2023, subject to compliance with the conditions set out in the Regulations. The EPO will be responsible for notifying the applicant of the registration of the unitary patent. In the event of deficiencies or non-compliance with certain conditions, the EPO will inform the applicant of the deficiencies and give the applicant the opportunity to make adjustments in due time.
The other transitional measure concerns deferral of the decision to grant a European patent. This measure applies to applicants that have already filed for a European patent with the EPO. After receiving a notice of allowance issued by the EPO, the applicant can submit a request to delay the granting of a European patent. Submission of the request will ensure that the notice of grant of the applicant’s European patent is published on or shortly after June 1, 2023. The purpose of this measure is to prevent a European patent from being granted before the new system goes into effect, which would prevent the applicant from obtaining unitary effect.
Unified Patent Court (UPC)
- Scope of the UPC and related legislative changes
The UPC, which will officially launch on June 1, 2023, is an international jurisdiction established by a number of EU Member States.
Until now, disputes relating to the validity or infringement of European patents have had to be filed in each of the countries targeted by the party initiating the action. This requirement is expensive for the parties and fosters potential legal discrepancies, as the different national jurisdictions are not bound by each other’s decisions.
The UPC will have the function of dealing with infringement and validity claims for both unitary patents and “classic” European patents:[5] it will have exclusive jurisdiction for unitary patents and for European patents validated in the states that are parties to the UPC Agreement. The new jurisdiction will help harmonize “the scope and limitations of the rights conferred by a patent.”[6] It will include technical judges capable of dealing with technically complex inventions and is expected to render decisions within relatively short timelines (approximately two years for a first-instance decision).
The UPC will therefore put an end to the need for patentees to bring actions in different countries, in addition to creating a degree of legal certainty.
- Jurisdiction of the UPC and transitional provisions
When the UPC enters into force, it will rule on all cases related to patents with unitary effect. While the UPC will eventually be the exclusive jurisdiction for litigation of all “classic” patents granted by the EPO and validated in the countries that have ratified the UPC Agreement, it will be possible to opt out of its jurisdiction for “classic” European patents during a transitional period of at least seven years). During the transitional period, litigation relating to “classic” European patents may be brought before national courts or the UPC, providing certain conditions are met.
- Why and how to opt out of the UPC
The holder of a “classic” European patent (i.e., without unitary effect) may prefer to opt out of the UPC’s jurisdiction for various reasons: to prevent revocation of the patent in all member states, to force third parties to bring revocation proceedings before each national court, or quite simply to avoid being among the first to use the new court system.
To opt out of the UPC’s jurisdiction, patentees will have to notify the Registry of the UPC;[7] this is called an “opt-out” request. The users concerned[8] may not opt out if an action has been brought before the UPC in relation to the patent.[9] This could lead to litigation tactics by third parties, such as direct competitors of the patentee: the filing of an action before the UPC by a third party before an opt-out request is filed will prevent the patentee from requesting an opt-out.
If a patent owner chooses to opt out, that choice will persist for the entire life of the patent and the settlement of disputes will take place before the competent national jurisdictions.
The opt-out option will be available three months before the entry into force of the UPC Agreement, during a period referred to as the “sunrise period,” which begins on March 1, 2023, under the current schedule.
A patentee may withdraw such an opt-out request, but only once and provided that no action has been brought before a national court. Once again, certain litigation strategies could arise, as a third party could bring an action before a national court and thus prevent the patentee from withdrawing the opt-out and benefiting from the UPC’s jurisdiction.
Strategic Advice: The Advantages and Disadvantages of the European Patent with Unitary Effect and the UPC
The greatest advantage of the unitary patent is undoubtedly an economic one. The costs associated with the granting of a unitary patent, including translation and maintenance fees, will be lower than the costs of national validations of a “classic” European patent in the jurisdictions concerned. The same observation applies to the UPC, which will offer a cost-effective option for dispute resolution. The UPC will save a European patent holder from having to bring multiple actions before national offices.
The procedural simplification of the general patent process – either through the filing of a single application with the EPO or in proceedings before the UPC – is also a potential incentive to use the new unitary patent system. The current complexity of the patent granting process in Europe may indeed deter some potential applicants.
The main disadvantage of the unitary patent is the risk of invalidation, which will have effect in all member states covered by the unitary patent. An additional disadvantage is the fixed amount of the maintenance fee: While the amount can be advantageous at first when there are many European countries of interest, it can end up being higher than what the patentee would pay for the maintenance of a few validations of a “classic” European patent if the desired territorial coverage shrinks over time.
With regard to the value of remaining under the jurisdiction of the UPC for European patents without unitary effect, the first criterion to be considered is the strength and scope of the patent or whether the technology is pioneering: for weaker patents, opting out of the UPC may be advantageous in that it increases the difficulty of invalidating the patent; for stronger patents, whose risk of invalidation is lower, the patentee may be more inclined to take the risk of pan-European invalidation.
Market size should also be taken into consideration. If the market concerned by the patent has a small territorial coverage, the benefit of the scope of the UPC’s decision is much less relevant, and it may make sense to opt out of the UPC’s jurisdiction.
Finally, special attention should be paid to the timing of exploiting the product or process covered by the patent. If early commercialization is anticipated (e.g., in the food or cosmetic industry), remaining under the jurisdiction of the UPC may be worthwhile so that infringement actions can be brought quickly. On the other hand, if a longer delay is anticipated before commercialization (e.g., in the pharmaceutical or biotechnology industry), opting out could be advantageous to reduce the risk of broad invalidation of the patent during the timeframe when there is no reason to enforce it against infringers.
Conclusion
The unitary patent and UPC changes are expected to officially take effect on June 1, 2023. As of that date, the unitary patent will offer an additional option for patent protection in Europe, in addition to the existing procedures for patent applications with national offices and so-called “classic” European patent applications.
The broader range of options for patent protection multiplies the possibilities, so that the protection strategy can be tailored to each invention.
Patent owners are strongly advised to review their European patent portfolios now to determine whether they wish to request an opt-out from the UPC’s jurisdiction.
Finally, the two transitional measures put in place by the EPO that will apply to European patent applications that have reached the final stage of the examination have just come into force. Applicants currently at this stage should be aware of these measures and assess their patent applications on a case-by-case basis.
ROBIC’s patent agents are at your disposal to assist you in the various phases of these strategic deliberations.
[1] The Agreement was signed by the EU members involved in the enhanced cooperation in February 2013.
[2] European Patent Guide, Section 2.4.015, May 2022, online: https://documents.epo.org/projects/babylon/eponet.nsf/0/8266ED0366190630C12575E10051F40E/$File/how_to_get_a_european_patent_2022_en.pdf.
[3] Presentation of the unitary patent, transitional measures and sunrise period (literal translation), April 6, 2022, online: https://www.casalonga.com/documentation/brevets-ccp/brevet-unitaire-164/articles-et-notes/presentation-du-brevet-unitaire-mesures-transitoires-et-sunrise-period.html?annee=2022&lang=fr.
[4] FAQ on the Unitary Patent, European Patent Office, accessed October 15, 2022, online: https://www.epo.org/applying/european/unitary/unitary-patent/faq.html.
[5] Unitary Patent & Unified Patent Court, European Patent Office, updated October 4, 2022, online: https://www.epo.org/applying/european/unitary.html.
[6] Unified Patent Court, European Patent Court, updated October 6, 2022, online: https://www.epo.org/applying/european/unitary/upc.html.
[7] The opt-out cannot be made by notifying the EPO.
[8] The opt-out request must be submitted by the proprietor(s) of the patent. Licensees, even if they are exclusive, are not eligible.
[9] S. 83(3) UPC Agreement.