12th April 2016

Expert advice from Abel & Imray: European patent law changes bring cost savings and added complexity

European Patents today

The European Patent Office (EPO) was set up in the late 1970s to examine and grant patents in multiple European countries. It has been a great success and allows a single patent application to cover up to 42 countries including all EU member states but also countries such as Switzerland and Norway which are not in the EU. However once the patent has been granted by the EPO, in order for it to remain in force in each country it must be “validated” a process which in some cases involves filing translation into a local language and in all cases paying annual renewal fees to national patent offices. Litigation under the patent, for example enforcing your rights by suing for infringement, must also be done nationally.

This national duplication has long been seen as an inefficiency and a competitive disadvantage for Europe and the EU has long been trying to streamline the procedure at least in so far as it applies to EU member states. Agreement on this issue has recently been reached and for early 2017 it is expected that national validation and renewal fee payment in at least the majority of EU member states will no longer be required. A new Unified Patents Court will also open for pan-EU litigation, life sciences litigation being handled in the London Division of that Court.

European Patents with Unitary Effect

Once the new regime has entered into force in 2017, on grant it will be possible to validate your European Patent “with Unitary Effect” meaning that at least 13 EU member states will be covered by a single translation and renewal fee payment. This is expected to result in significant cost savings and if you wish to take advantage of these, you should talk to your patent attorney about the possibility of deferring grant until the new regime has come into effect.

Unified Patent Court

Additionally, the forthcoming changes will result in the setting up of a pan-EU patent court. This has the advantage of lowering the costs of multijurisdictional litigation and the risk of conflicting national decisions which that brings. The new court, however, is untested and many patent owners would prefer the newly appointed judged to cut their teeth on other peoples’ patents. Your existing patents will fall under the jurisdiction of this new court unless you opt them out which you will be able to do for a “sunrise period” expected to open in Autumn 2016. Your patent attorney should be contacting you sometime this year about this option.

Tim Hewson is a Consultant Patent attorney at Abel & Imray in Cardiff and Bath. He is the author of “The Abel & Imray Guide to the Unitary Patent and Unified Patent Court” which will be published in May 2016. Please email tim.hewson@abelimray.com if you would like to be sent a copy.

View the Abel & Imray profile here

Abel & Imray are working with MediWales to deliver the LifeScience Academy workshop: Innovation Leads – The Essential Guide to an Effective Patent Strategy on 24th May 2016.