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Prepare for Changes to Patent Procurement and Enforcement in Europe | Firm Alert

| Dan Altman

Unitary Patent and Unified Patent Court

The long-awaited Unitary Patent and Unified Patent Court in Europe are now expected to come into existence on June 1, 2023.  These related developments are described below.

European Patent with Unitary Effect

The European Patent with Unitary Effect, or “Unitary Patent” (UP) will be a single patent that covers 17 countries of the European Union (EU), namely Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.

The UP is not available for all 40 member states within the European Patent Convention, or EPC.  For now, it does not cover the 10 other EU countries, such as Spain, Ireland or Poland, although this may change.  It also does not and likely will not cover any of the non-EU countries that can be validated from a European patent under the EPC, such as the United Kingdom, Switzerland or Norway.  

The UP can be obtained by requesting validation of a granted patent from the European Patent Office.  It still will be possible to validate a granted European patent in the individual countries, even the 17 countries participating in the UP.  It is generally thought that if validation in four or more of the 17 countries is desired, the UP will be more cost-effective than validating in the individual countries.  However, if protection in fewer than four of these countries is desired, the traditional route of validating in individual countries will likely be more cost-effective.

We will inform you of the opportunity to validate as a UP when you have a granted European patent.  Thus, no specific action is required until such opportunity arises.
 

Unified Patent Court

The Unified Patent Court (UPC) will have jurisdiction over all matters relating to validity and infringement of Unitary Patents, as well as over patents validated in any of the 17 participating countries.  This includes previously-issued patents that you may currently be maintaining.  However, holders of patents validated in the individual countries will have the option of opting out of participation in the UPC, such that proceedings on those patents would continue to be held in the courts of the individual countries.  During a “sunrise period” scheduled to begin March 1, 2023, it will be possible to opt out of participation prior to the coming into force of the UPC.  However, it still will be possible to opt out at a later date as long as a proceeding at the UPC has not begun.  Moreover, if you do opt out, it will be possible to opt back in at a later date, as long as a proceeding in a court of one of the individual countries has not yet begun.

​​​​Opting out may be advisable for patent holders because otherwise, the UPC will have the power to find an entire family of patents (any validated in the 17 countries from the same European Patent Application) invalid in a single proceeding. Traditionally, in-country courts have only had such power over one patent in the family. Opting out also avoids uncertainties of participating in an as-yet untried system. Although there will be no official fee for opting out, our European associates expect to charge fees of approximately $75-$250 for each European patent for which you desire to opt out. 

If you would like to opt out of the UPC for any of your existing European patents, please inform your attorney prior to the March 1, 2023 expected date for the beginning of the sunrise period.  If you do not contact us, we will assume that no action is to be taken such that your validated European patents will be subject to the jurisdiction of the UPC.