Unitary Patent & Unified Patent Court
The Unitary Patent and the Unified Patent Court supplement the existing European patent system. They offer users of the European patent system additional options for patent protection and patent disputes in Europe.
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The European patent package (EPP)
Establishing the Unitary Patent (UP) and the Unified Patent Court (UPC) is a milestone in the development of harmonized patent law in Europe. The now-established European Patent Package includes the Regulation (EU) No. 1257/2012 (“Unitary Patent Regulation”, UPR), the Council Regulation (EU) No. 1260/2012 („Unitary Patent Translation Regulation“, UPTR), and the Agreement on a Unified Patent Court (UPCA).
What is the unitary patent?
Upon request, the proprietor of a European patent can obtain a unitary patent. Said unitary patent shall provide protection within the territories of the member states participating on the unitary patent. In contrast to the European bundle patents, the unitary patent provides for protection in a sub-territory of the EU consisting of the territories of the participating member states. It has a unified effect within said sub-territory and can be transferred, limited, revoked, invalidated or lapse only with respect to the entire sub-territory. Partial transfer, limitation or invalidation is not possible and the unitary patent will always lapse in its entirety. Annuity fees need to be paid for the unitary patent in its entirety. It is not possible to pay annuity fees only for selected countries within the unitary patent. A unitary patent is registered in a special register.
In which countries is the unitary patent valid and what happens with the conventional European bundle patents?
A patent with unitary effect is generally valid in the participating member states. These states are: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia and Sweden. However, in order to have the uniform effect, the EPP must also be in force in the relevant participating member state at the time of registration. A subsequent extension of the unitary patent is no longer not possible. In addition to a Unitary Patent, traditional national Patents based on European Patents exist, even if a Unitary Patent was requested. Such traditional national Patents are available in EPC contracting states in which no unitary patent protection is possible, since the states are non-EU member states of the EPC, i.e. Switzerland, Norway and Turkey, or non-participating EU member states such as Spain, Croatia and Poland, or participating member states in which the Please contact us, we are pleased to develop an individual strategy.
How is a unitary patent generated?
First, a European patent must be granted by the European Patent Office. In principle, nothing changes in the granting procedure. A request for unitary effect must then be filed with the European Patent Office within one month of the publication of the mention of the grant of the European patent.
For the so-called “sunrise period” after deposition of the ratified Agreement in Germany until the date of effect, it is possible to file an early request for unitary effect or a request for a delay in issuing the decision to grant a European patent. Moreover, a request for opting-out from the UPC can also be filed. (see below)
Please do not hesitate to contact us for any further details and costs of the aforementioned measures.
What are the risks of the patent with unitary effect?
A major risk of the patent with unitary effect is that it constitutes a unitary property right and can therefore, e. g, also be uniformly declared invalid in all participating member states in which it has effect. As a result of such a „central attack“, there is a risk of losing the entire patent with uniform effect. In the case of particularly valuable European patents, a request for unitary effect should, therefore, be carefully considered.
By requesting a unitary patent, the newly established Unified Patent Court will become automatically responsible for all post-grant proceedings relating to the unitary patent. Accordingly, the national courts having a well-known and established practice are no longer responsible. “Forum shopping” as done in the past is not possible for a unitary patent.
Yet, it is to mention that a reduction of annuity fees later in patent life is not possible since annuity fees for the unitary patent need to be paid always for the entire unitary patent even if later on protection is only sought for Germany.
Please do not hesitate to contact us for an individual strategy.
Does this mean that the national courts are losing their importance?
National courts do not lose their jurisdiction entirely, even if the number of cases dealt with before national courts is likely to decrease significantly. Within a transitional period of seven years after the entry into force of the UPCA, national courts are still also competent for nullity actions or infringement claims in connection with European bundle patents, i.e. European patents without unitary effect for which the so-called “opt-out” declaration was filed, in addition to the UPC. During this transitional period, for example, nullity actions against the German part of a European patent (without unitary effect) can be brought before the German Federal Patent Court, or infringement claims can be brought before German infringement courts.
For an individual strategy developed towards your needs, please do not hesitate to contact us.
