28 Jul 2022

Recent progress towards Unitary Patent and Unified Patent Court

Europe’s long-awaited Unified Patent Court and the European Union’s Unitary Patent could (and even should) both be available before the end of 2022. Even if there is a short delay, the UPC is almost certain to be open for business in late 2022 or early 2023.

Unified Patent Court

Proprietors of European patents will need to decide, within the next few months, whether they are happy for the validity and infringement of their existing European patents to be decided by the new Unified Patent Court, or whether they wish to opt out of the jurisdiction of the new court.

This week’s news was that the Protocol on Provisional Application to the Agreement on a Unified Patent Court (the PPA to the UPCA) came into force on 19 January, following the deposit of Austria’s instrument of ratification. This started the provisional application period (which is expected to take 8 months), allowing appointment of judges and technical preparations for the Unified Patent Court. There is still a need for Germany to deposit its UPC Agreement ratification instrument to formally trigger the entry into force of the UPCA, but that was approved by the German parliament in December 2020. Germany is expected to deposit within a few months, possibly as early as May 2022, and so the UPC could open its doors to cases before the end of 2022.

Unitary Patent

Once the new system has come into force, Applicants for a European patent will need to decide whether they wish to choose unitary effect for all participating states of the European Union (i.e. to have a Unitary Patent alongside any other selected states) or to only have the patent take effect in selected individual countries. Choosing a Unitary Patent will require the payment of a single annual renewal fee in respect of the participating countries, whereas validating the patent in only selected countries will enable maintenance decisions to be made country-by-country. The more European countries an applicant wants to protect their invention in, the more renewal fees are saved by choosing a Unitary Patent.

The EPO has announced transitional measures to help applicants prepare for the Unitary Patent, including:

An option to request delayed issuance of the decision to grant a European patent, to delay grant until the Unitary Patent is available. A specific request form has been created. See: https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20220119.html
An option to submit early requests for Unitary Patent protection. https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20220119a.html

These requests for delay and request for unitary effect may only be filed for European patent applications after despatch of an approval for grant (a communication under Rule 71(3) EPC), and both of these transitional measures will only take effect after Germany deposits its ratification instrument.

Background

The Unified Patent Court and Unitary Patent are very significant developments and this progress is pleasing. The Unified Patent Court has the potential to greatly reduce European litigation costs and to provide consistency across all participating EU states. For patent proprietors that wish to maintain patent protection in more than 4 or 5 EU states (and are happy to accept the risk of protection being lost in all states at the same time if the patent is successfully challenged), the Unitary Patent will reduce their renewal costs. But unitary protection is not the only option – applicants are not losing the option for a European patent grant to provide a set of national patent rights in selected countries; they are getting a second option.

It is important to remember that the European Patent Office has never been an EU institution, and many contracting states of the European Patent Convention are outside the EU (including UK, Norway, Switzerland, etc). Most of the work of the EPO will continue unchanged, but the EPO will soon provide two options:

Proceed to grant of a European patent with separate renewal of the patent in a selection of individual states, allowing maintenance decisions country by country. This is business as usual.
Proceed to grant of a European patent with separate renewal in a selection of individual states and with unitary protection for all participating EU states.

Authors: Nick South and Mike Jennings

Return to listing