Introduction

A patent gives its owner the exclusive right to prohibit others from manufacturing, using, selling, or offering for sale the invention in the country where the patent is granted, as well as, in some cases, importing the invention (1).

The European Unitary Patent entered into force on Thursday, June 1, 2023, after a decade of delays from the original schedule and a laborious alignment among the various European states. This article will provide an overview of the milestone’s history, implications, and practical implications.

History of a laborious adoption process

The concept of a European patent first appeared in the 1960s. The idea has re-emerged in 1999, and by 2003, a proposal for a unified Jurisdiction had been made. The Unified Patent Court (UPC) Agreement was established ten years later. However, it took another decade for this project to become a reality.

The political and legal context has not helped the situation, especially with Brexit and the UK’s withdrawal of ratification. The UK played a significant role in supporting this crucial project. Indeed, the Agreement originally included provided for several UPC divisions, including one in England, so its withdrawal caused a stalemate. As a result, it will not be possible to bring in Great Britain when the European Unitary Patent is granted, as the country is no longer part of the enhanced cooperation.

Furthermore, obstacles arose in Germany, which deemed the project unconstitutional because it exceeded the scope of the German Constitution. It included rules and articles that took precedence over national laws. This obstacle has now been overcome, and the UPC has established a specialised division in Germany with expertise in life sciences and chemistry.

Despite these challenges, 17 European Union member states had ratified the original Agreement signed in 2013 for the creation of the UPC through enhanced cooperation as of March 2023. The primary objective of this adoption is to make it possible to obtain protection for an innovation in all member countries participating in the enhanced cooperation, by filing a single application with the European Patent Office (EPO).

Countries included in the harmonisation of protection

Due to the aforementioned delays, it is important to note that the EPO has 39 members. Among these, 25 participate in the enhanced cooperation (2), and 17 are part of the Unitary Patent (3). These 17 countries are: Germany, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden.

Key Features of the European Unitary Patent

The Unitary Patent is based on the European Patent Convention (EPC), with no changes to the pre-grant phase. This refers to the acts performed prior to grant, such as filing, designation, and examination. These acts must still comply with the EPC’s requirements.

To obtain the unitary effect, the applicant checks the corresponding box during the grant and printing payment stage. In this sense, a unitary patent is a European patent granted by the European Patent Office (EPO) for which the holder has applied for registration on the basis of the unitary effect. Therefore, the EPO serves as a one-stop service.

The implementation of the Unitary Patent will do away with the need for time-consuming and expensive national validation processes. Validation and maintenance of European patents previously required separate procedures in each member state, a time-consuming and potentially costly process that scaled directly with the number of countries involved. In comparison to a traditional European patent, the EPO will not charge any additional procedural fees with the unitary patent. As a result, unitary patents are no longer subject to the fragmented system of annual fees. The need for appointing a representative has been removed and replaced by a streamlined process, a single currency, and a single deadline. In addition, expenses and paperwork are minimised because the EPO deals with everything after a grant has been issued.

The unitary patent regulation does not affect the right of member states to grant national patents. It is not intended to replace national or regional patent laws. Patent applicants continue to have the option to obtain either a national patent, a unitary European patent, or a European patent that has effects in one or more contracting states of the EPC.

To encourage innovation, the online register includes information on the legal status of unitary patents, such as licences and transfers. This promotes the transfer of technology and investment in innovation (4).

Unified Patent Court (UPC): Simplifying European Patent Disputes

The patent system is inextricably linked to the formation of the UPC (5). Without exception, the UPC has exclusive jurisdiction over Unitary Patents.

However, the UPC does not have exclusive jurisdiction over traditional European patents, and national courts retain their jurisdiction. Patent holders can opt out of the UPC’s jurisdiction by using an opt-out system. This is only possible during a 7-year transition period, which can be extended to 14 years, if no proceedings have been initiated before the UPC.

In terms of structure, the UPC consists of a Court of Appeal in Luxembourg and a Registry. Additionally, it has a first-instance court comprising a central division based in Paris, a division in Munich, and several local and regional divisions.

With the establishment of the UPC, there is no longer a need to initiate actions in different countries (6). Previously, national courts and authorities had jurisdiction over patent infringement and validity disputes (7). A patent dispute involving multiple member states necessitated the rights holder taking parallel action in all relevant national courts.

Another goal of the UPC’s creation is to simplify and improve the efficiency of the judicial procedures it handles. Its decisions, as well as the sanctions imposed, have an impact throughout Europe.

However, it will be necessary to wait a few months to assess the developments and consequences in practical community practise…

Dreyfus & Associates, a law firm specializing in industrial property, leverages its expertise to assist clients with any inquiries regarding the new procedure for filing a European Unitary Patent.