What is the European Patent with Unitary Effect
The Unitary Patent is an industrial property title granted by the European Patent Office (EPO) and will allow you to simultaneously obtain patent protection in the participating EU countries that have ratified the Agreement on the Unified Patent Court.
The Unitary Patent does not replace but complements the European Patent, which will remain a viable way to obtain protection in countries not participating in the Unitary Patent or a valid way to obtain a foreign national patent in a country of special interest or non-EU countries, such as Switzerland, the United Kingdom or Turkey.
Differences compared to the European Patent
The Unitary Patent is a single title valid in the participating EU countries and does not require, unlike the European Patent, a validation phase in each state to obtain protection through validation and obtainment of a national patent.
Consequently, the jurisdiction for infringement decisions is no longer with the national courts and it is referred to the newly established Unified Patent Court (UPC).
Advantages and disadvantages compared to the European Patent
– payment of a single renewal fee directly at the EPO;
-fewer charges for translations (if a lot of states are designated in the case of a European patent);
-possibility of infringement actions at the Unified Patent Court (UPC) with effect in all participating countries.
– in the case of invalidity actions against one’s own patent, while in the case of the European patent a competing company has to initiate an action for each validation country, with the unitary patent a single action before the Unified Patent Court is sufficient with the consequence that a single adverse decision has effect for all countries;
– this being a unitary title, a bundle of national patents is not obtained as for the European patent and, therefore, it is not possible to assign a foreign national patent from one state in the patent bundle to a third party while maintaining ownership of the other foreign national patents.
Current status and effective entry into force
– The participating countries will be 25, but at present only 17 have ratified the agreement: Italy, France, Germany, the Netherlands, Belgium, Luxembourg, Malta, Sweden, Denmark, Finland, Estonia, Latvia, Lithuania, Slovenia, Portugal, Austria, Bulgaria.
The following have not yet ratified the agreement: Poland, Cyprus, Greece, Czech Republic, Slovak Republic, Romania, Hungary, Ireland.
This implies that the granted Unitary Patents will have a different territorial scope of protection depending on the number of participating countries at the time of granting and this scope will remain invariable for the entire duration of the patent.
Options available to holders of European patents already granted
European Patents already granted with a filing date after March 1st, 2007, will be automatically considered to fall under the jurisdiction of the Unified Patent Court for the states in which the European Patent has already been validated.
If you do not wish to bring your industrial property titles under the jurisdiction of the Unified Patent Court, you have to submit an explicit request for exclusion from the new system.
Options available to holders of non-unitary European Patent applications under examination
European patent applications under examination and with a filing date after March 1st, 2007 will be automatically considered to fall under the jurisdiction of the Unified Patent Court.
It will be possible to delay the granting of a patent application until the entry into force of the UPC in order to request the granting of the European Patent with Unitary Effect.
If you do not want your European patent application to automatically enter the Unitary Patent system, you have to submit an explicit request for exclusion (OPT-OUT).
What to do if you are the owner of a granted European patent or of a European patent application
The owners of European patents granted and with a filing date after March 1st, 2007 have to
- decide whether to bring them under the jurisdiction of the Unified Patent Court or exclude them by filing an “OPT-OUT” request.
The owners of pending European patent applications have to:
- decide whether to bring them under the jurisdiction of the Unified Patent Court or exclude them by filing an “OPT-OUT” request;
- consider, in particular for applications that are close to granting, whether to submit
request to delay the granting until the effective entry into force of the Unitary Patent in order to request the granting of the title with unitary value.
Unified Patent Court