European patent practice is changing - what does this mean for you?

2022-23 is likely to see significant changes to European patent practice. These changes will affect existing and future European patent applications and patents.

• What is changing?

Plans for a unified pan-EU patent registration and enforcement regime have been under discussion for decades. At long last, these plans appear to be coming to fruition.

Final preparations for a Unified Patent Court, for central litigation of patents in the European Union, are likely to be completed early in 2022. After these are completed, Germany is expected to formally ratify the United Patent Court Agreement (UPCA). Three months after Germany’s ratification, the UPCA will come into force.

This will trigger the implementation of two major changes in European patent practice.

First, it will become possible for the first time to obtain a new type of European patent, known as a “Unitary patent” or “European patent with unitary effect”. This patent will be uniformly applicable to and enforceable in all the EU countries that are participating in the UPCA at the date of grant of the patent. From the outset, the UPCA-participating countries will include: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden. Further EU countries are expected to join the system in due course.

Second, the Unified Patent Court (UPC) will open for business. The UPC will have exclusive jurisdiction over the litigation of Unitary patents. The UPC will also have jurisdiction over the litigation of traditional (bundle) European patents in UPCA-participating countries.

For an initial transitional period, owners of traditional (bundle) European patents will be allowed to opt their patents out from the jurisdiction of the UPC, should they wish to litigate their patents before national courts instead. An opt out must be registered in good time in order to take effect.

• How can I get a Unitary patent?

Unitary patent protection may be requested for any European patent granted by the European Patent Office (EPO) on or after the date on which the UPCA comes into force.

The process for obtaining a European patent will not change. All European patent applications will continue to be examined and granted by the EPO.

Currently, a European patent granted by the EPO must be nationally validated after grant, yielding a bundle of independent national EP patents. Once the UPCA has come into force, most applicants will enjoy the additional option of requesting unitary effect. A request for unitary effect must be filed within one month of the date of grant. If the request is allowed, the European patent will take effect as a Unitary patent in all the UPCA-contracting states. Patent protection in EPC countries that are not participating in the UPCA at the time of grant (Namely: EU countries which have not ratified the UPCA at the date of grant of the patent, and non-EU countries) may be sought via the traditional national validation route.

Applicants who do not wish to obtain a unitary patent can validate their European patent in the traditional way in any combination of EPC contracting states.

• What are the main advantages of a Unitary patent?

A Unitary patent may represent a relatively low-cost and convenient option for patent proprietors who wish to protect their inventions in several of the UPCA-participating countries.

A Unitary patent is obtained via a centralised process with minimal translation requirements. This is likely to be less onerous and costly than traditional validation in multiple states.

A Unitary patent is subject to a single annual maintenance fee. This contrasts with traditional national patents, which are each subject to individual annual maintenance fees.

A Unitary patent may also be uniformly enforced across several states by way of a single court action. This contrasts with traditional national patents, which must be individually enforced before national authorities.

• What are the main disadvantages of a Unitary patent?

A Unitary patent may represent a less attractive option for applicants who do not wish to protect their invention in more than a few of the UPCA-participating countries. An applicant who, for example, requires patent protection in only the UK, France and Germany may find the national validation route more cost-effective than a Unitary patent.

Unitary patents may also be regarded as potentially more vulnerable to revocation than a bundle of national EP patents. A Unitary patent may be eliminated by a single successful revocation action before the UPC. By contrast, national EP patents which have been opted out of or do not fall under the jurisdiction of the UPC must be separately litigated before each national court, allowing the patent proprietor multiple independent opportunities to defend the respective national patent rights.

For this reason, a Unitary patent may be a less attractive option in the case of an important invention or key technology.

• I have a pending European patent application – what should I do now?

If the application is approaching the point of grant, you should consider now whether or not a Unitary patent may be an attractive option. If so, it may be worth delaying prosecution of the application. If the application is granted before the UPCA enters into force, a Unitary patent will not be available as an option.

On the other hand, it cannot at this point be guaranteed when - if ever - the UPCA will come into force. It may not prove possible or practicable to delay the prosecution of an application until this point.

• I have a granted European patent – what should I do now?

Unitary patent protection is not available for any European patent which has already granted. However, if the patent has been validated in any of the UPCA-participating states, then you should consider now whether you are open to litigating these national EP patents before the Unified Patent Court (UPC), or whether you would prefer to proactively opt your national EP patents out of the UPC’s jurisdiction.

If you do not opt out your existing national EP patents, then they will be subject to the jurisdiction of the UPC. This may make your national EP patents more vulnerable, should a third party decide to commence a central revocation action before the UPC.

If you opt your existing national EP patents out of the jurisdiction of the UPC, then they may be opted back in at a later stage, should you decide that you wish to commence an action before the Court. This will only be possible if a national action has not commenced in the meantime.

Any opt-outs of existing national EP patents should be registered during a “sunrise” period of three months before the UPCA enters into force. Thus, it would be advisable to consider now whether existing EP patents should be opted out of the jurisdiction of the UPC.

More detailed information on the new system may be found HERE which includes our booklet – “European Patents and the Unitary Patent System”

For further information or advice, please get in touch with your usual Abel + Imray contact.