Major developments for patents in Europe – the Unitary Patent

Major developments for patents in Europe – the Unitary Patent

The current European patent system allows innovators to pursue patent protection effective in up to 44 countries via a single patent submitted to the European Patent Office (EPO). The European patent system has been well established for over four decades and receives huge volumes of patent applications from innovator companies across the globe. In 2020 the most recent year in which statistics are available, over 180,000 patent applications were received by the EPO. After the EPO has examined and granted a patent, some further administrative actions are needed for most countries to bring the patent into force in that country. With a view to achieving a simpler patent system and reducing the costs associated with patenting, the EU will shortly be introducing a refinement of the current European patent system – known as the Unitary Patent.

European patents granted by the EPO may cover all of the 27 EU countries and also various non-EU countries, such as UK, Switzerland, Norway, Turkey and many more. The Unitary Patent is an EU only instrument and thus will not cover UK or any of the other non-EU states. These non-EU states will continue be part of the current EPO system and there will be no change in that regard. Applicants based in these non-EU countries and in any other countries across the globe will be able to apply for Unitary Patents.

Even within the 27 EU states eligible to take part in the Unitary Patent system, Spain and Croatia have thus far chosen not to sign up. Poland has also not agreed to the related Unified Patent Court and thus will be outside of the Unitary Patent at least for the time being. The result is that only 24 of the 27 EU states will be open to proceed with the Unitary Patent system.

Several countries including Ireland have not yet ratified the necessary EU legislation. Currently only 16 states have formally ratified. If a state has not ratified at the time of grant of a European patent, it will be possible for the applicant to request a Unitary Patent but the Unitary Patent will only cover the states that have actually ratified, not any non-ratified states. There will be no possibility to subsequently extend the geographical coverage of the Unitary Patent if a country ratifies at some later point in time. This is a notable difference to the other EU IP rights of the EU trade mark and the Registered Community Design. As we get close to the eventual start date of the Unitary Patent system, it is becoming increasingly likely that some of these states will not ratify in time and so will miss the start of the Unitary Patent system. For example in Ireland a national referendum will be necessary before ratification may take place. We can then expect that a first batch of the 24 EU states will be ready when the first Unitary Patent is granted. Over time the remainder of these 24 may ratify and so be covered by later Unitary Patents. In the future Spain, Croatia, Poland or other new EU member states may also join the Unitary Patent system. The result of all of this will be that different generations of Unitary Patent will have different geographical coverage. For the sake of simplicity in the remainder of this article we will refer to the EU states which have ratified as the ‘participating EU states’. At the time of writing, there are 16 participating EU states but this number will inevitably increase by the time the first Unitary Patent is granted. At least Germany is required to ratify to bring the Unitary Patent system into operation, and we can also anticipate other EU states ratifying over the coming months.

The new Unitary Patent will not replace the current European patent. Instead the Unitary Patent will be an additional option available to an inventor to protect an invention. The applicant will have three options available to pursue patent protection in countries in Europe:

  • a Unitary Patent to cover all of the participating EU states together with a European patent validated in any of the other EU states, such as Spain, and non-EU states, such as UK, that the applicant is interested in
  • a European patent validated in any of the EPO states the applicant is interested in, such as Germany, or Italy, or Spain, or UK
  • seek national patents instead of the centralised EPO system

It will not be possible for an applicant to seek double protection of both a Unitary Patent and a validated European patent for the same state. However double protection of a Unitary Patent and a national patent may or may not be possible depending on the national law in each EU country. For example a recent law change in Germany will allow double protection for both a German national patent and a Unitary Patent.

The most notable distinction between the new Unitary Patent and the existing system of validated European patents is that the Unitary Patent will have a unitary effect across all of the participating EU states. Observers of EU IP rights such as the EU trade mark or the Registered Community Design will be familiar with this concept. A Unitary Patent may only be enforced or revoked or assigned or allowed to lapse with effect for all of the participating EU states.

The procedure for filing a patent application at the EPO and the subsequent examination will remain unchanged. There will be no change to the requirements to obtain a patent, such as novelty and inventive step. The Unitary Patent will be granted by the EPO subject to the current provisions of the EPC with the same prosecution, opposition, and appeal procedures as currently for grant of European patents. There are two additional administrative steps required, the first being for the proprietor to request for a Unitary Patent with the EPO within 1 month of grant of the patent. There is no additional fee to request this Unitary Patent status.

The other additional administrative step is for the proprietor to file a translation of the patent specification at the EPO. If the European patent is in English, then a translation into any other language of the EU is required. If the European patent is in French or German, then a translation into English should be filed. To ease the burden of this additional translation cost, compensation of €500 will be available for EU SMEs, individual inventors, and non-profit organisations, but only if the original patent application was filed in a local EU language other than English, French, or German.

This translation requirement will be in place for a transitional period of up to 12 years. After expiry of this transitional period, proprietors will no longer be required to file any translation. Instead machine translations will be provided by the EPO. These machine translations would have no legal effect, and would be provided for information only. In the case of a dispute, the proprietor would be required to file a translation of the patent specification into the appropriate language.

For a Unitary Patent, a single renewal fee will be payable to the EPO directly. This is in contrast to the existing approach with validated European patents, where a separate renewal fee is payable to each national patent office. The amounts of the renewal fees for Unitary Patents were the cause of much debate and were ultimately decided to be equivalent to the sum of the national renewal fees of the top four states in which European patents are most frequently validated, that is in Germany, France, UK, and Netherlands. The irony of using UK considerations is because the debate to agree the renewal fee amounts was quite drawn out and dates back long before Brexit. As an indication a Unitary Patent renewal fee for the fifth year will be €315, vastly lower than the combined renewal fees for 25 EU states of about €2,500. For the twentieth year the Unitary Patent renewal fee will be €4,855, compared to about €19,200 for 25 EU states. Despite concerted lobbying, it has been decided that there will be no revision of the amounts of the renewal fees as a result of UK leaving EU.

The renewal fee amounts are to be static and will not vary depending on geographical coverage of the Unitary Patent. Unlike with the current system of validated European patents, there will be no possibility with a Unitary Patent to gradually reduce renewal fees over time by allowing selected states to lapse. The Unitary Patent is a unitary right to be either maintained in all of the participating EU states or to be allowed to lapse in all of the participating EU states.

Patentees will have the option of seeking to reduce renewal fee by 15% by offering a licence to the patent as of right to any interested licensees.

The opposition procedure at the EPO will still remain in the same form as currently. It will be possible for a competitor to oppose a European patent after grant irrespective of whether it has Unitary Patent status or not. Similarly it will be possible to seek re-establishment of rights for a Unitary Patent similar to the current EPO procedure with the same level of fees.

Patents are considered to be objects of property. For the Unitary Patent with its status as being a unitary right there will be no separate new laws in relation to property rights. Instead the national law of the state where the applicant was resident or had its place of business on the filing date will be applied. If the applicant is not a resident and does not have its place of business in a Unitary Patent state, then German national law will apply.

Supplementary Protection Certificates (SPC) may be based on a Unitary Patent in a similar manner to the current procedure of basing SPCs on validated European patents.

The introduction of the Unitary Patent is linked to the opening of the new Unified Patent Court. Final preparations are ongoing and both are expected to be up and running in late 2022. In advance of the actual start of the Unitary Patent system there will be a sunrise period in which it will be possible to make an early request for Unitary Patent status. It will also be possible during this sunrise period to request that the EPO delay the granting of a patent so that the Unitary Patent option can be availed of.

In later articles we will discuss how the Unified Patent Court will operate, and what businesses need to do to prepare for the upcoming Unitary Patent and the Unified Patent Court.

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