16th June 2014

June’s Expert Advice- Withers & Rogers LLP

The Unitary Patent – A New Patent for Europe

Efforts to introduce a single Europe-wide patent have been ongoing for at least forty years. Along the way, various proposals have come and gone. The issues of language and litigation have always presented major stumbling blocks. However, we are now on the brink of having a patent which covers much of Europe. The legislation has been all but finalised, and the timetable to implementation is set. It’s now time to start preparing for the biggest change in the European patent landscape since the inception of the European Patent Office (EPO). In this article we provide an introduction to the key aspects of the Unitary Patent, and the accompanying Unified Patent Court.

1. Hang on! Don’t we have European patents already?

Yes, we do have a European patent. However, the European patent is European in name only. Although it includes a single central filing and application process, when the EPO grants a European patent, what results is a bundle of national patents. Each patent only covers a single country, and each patent must be litigated in that country. In the following article, we will refer to this as the existing European patent system.

2. So what is the Unitary Patent and how is it different?

The Unitary Patent is a completely new patent that will cover several European countries. This is a hugely significant development, as up until now patent protection in European has been on a country-by-country basis. The Unitary Patent is being implemented by the European Union (EU), and it is intended that it will eventually cover all countries of the EU. However, initially at least, it will most likely only cover a subset of countries.

3. What will the actual geographic coverage be?

As noted above, the Unitary Patent is a EU initiative. It is possible that the patent will eventually cover all countries of the Union. However, certain countries, such as Spain and Italy, are not currently taking part in the Unitary Patent because of objections they have over language provisions. Furthermore, when the Unitary Patent becomes available, it is expected that several other countries will not immediately join up.

As this is a EU patent, several non-EU European countries will not be covered; notably Norway, Switzerland and Turkey. However, these countries are still available through the existing European patent system.
4. How will I apply for a Unitary Patent?

Good news! Unitary Patents will be applied for via the EPO using the existing European patent application procedure. In fact, European patent applications will be used to obtain either traditional European patents, or Unitary Patents. On grant of a European patent, the applicant will have a choice over which route to take for Unitary Patent countries.
5. Will I be able to obtain a Unitary Patent and a traditional European patent?

In short, yes. However, only for non-overlapping countries. In other words, you can obtain a Unitary Patent which will cover a certain number of EU countries. A traditional European patent may then be obtained for any countries which are not part of the Unitary Patent system, but which are part of the European patent system.
6. How much will a Unitary Patent cost me?

Because the application procedure is the same as for existing European patents, the filing and examination costs should stay the same.

7. Will I be able to keep my existing European patents out of the new Court system?

Yes. During the same seven year (or fourteen year) period, you will be able to opt your European patents out of the UPC. The opt-out will last for the life of the patent, but may be revoked by the proprietor at anytime. If an opt-out is revoked, it will not be possible to bring a legal action in the national courts, after the end of the seven year transitional period. However, if a legal action is brought in the UPC before an opt-out is registered (for example, a revocation action by a third party), it will no longer be possible to register an opt-out.

8. What is the main reason for opting out?

The main reason is simple: to avoid the possibility of third parties bringing a single revocation action against your existing European patents. Currently, European patents must be attacked on a country-by-country basis, which puts the patentee in a strong position. Under the UPC, a European patent can be revoked in a single action. The only way to avoid this is to opt out of the UPC.

9. When is this going to happen?

The general consensus amongst commentators is that the first Unitary Patents will be registered in late-2015. One of the reasons for this is that thirteen countries must ratify the legislation before it can come into force. This must include the UK, France and Germany. The UK has indicated that the earliest it can ratify the legislation (owing to the rather slow progress in parliament) is April/May 2015.

However, the good news is that the new law will apply to any European patent applications pending at the time if comes into effect. Given that European patent applications can take several years to examine, applications being filed now may have the option of becoming Unitary Patents.

Conclusions

We finally look set to have a patent system in Europe that enables patent owners and potential infringers to litigate in a single Court. The cost of EU-wide patent litigation looks set to fall, as does the cost of protecting your inventions throughout the EU. This will not only benefit existing users of the system. It is likely that EU-wide patent ownership and litigation will become accessible to companies who previously ruled it out.

At this stage you need to do very little in terms of planning. Ensuring that you and your colleagues are aware of the changes is probably sufficient. However, you need to be prepared to make decisions in the near future. Most notably, will you “opt-out” your existing European patents, and will you register for Unitary Patents or a bundle of national patents in EU countries.

 

Andrew Thompson
Partner, Withers & Rogers LLP