A Unitary Patent option and a common Patent Court in the EU, likely coming in 2022

Finally, after many years of difficulties, the combined Unitary Patent (UP) and Unified Patent Court (UPC) project is about to become a reality.

The announcement by Germany of its ratification of the Protocol on Provisional Application (PPA) in August 2021, along with the subsequent deposit of the PPA ratification instrument in September 2021, has marked an important milestone towards entry into force. What stood in the way was the needed ratification of the PPA by one more Member State which is no longer the case and, ultimately, the final stages towards entry into force can be underway.

What are the next steps?

On January 18th, 2022, Austria filed its instrument of ratification of the PPA. With that filing, the Provisional Application Phase (PAP) for the UPC can begin, allowing for the operational preparations of the UPC. When Germany is reassured that preparatory works for the Unified Patent Court are sufficiently advanced, it will ratify the UPC Agreement that will trigger the start of the UP/UPC Package 3 to 4 months thereafter.

It is currently expected that the Unitary Patent and Unified Patent Court may enter into effect by the end of 2022 or early 2023.

What is the Unitary Patent?

The Unitary Patent (UP) is a new protection instrument created by European Regulations. Next to the existing systems of national patents and European bundle patents granted by the European Patent Office (EPO), Unitary Patents will represent a new option for patent protection in the EU.

Unitary Patents will be obtained on the basis of a granted European Patent. To that extent, nothing will change in the pre-grant phase, but rather post-grant, a request for unitary protection can be made to the EPO in order to obtain a Unitary Patent.

Contrary to existing European Patents that evolve into a bundle of national patents via validation process, Unitary Patents will remain a single property title across all EU participating Member States which provides uniform protection for the entire duration of the patent.

Unitary Patents will also be subject to one single annual fee which must be paid centrally at the EPO. They will only lapse, be revoked or limited and/or transferred for all participating Member States as a whole.

What is the Unified Patent Court?

The Unified Patent Court (UPC) is a new patent litigation forum for the EU, that was created by an International Agreement. This newly established Court will not have authority over national patents as its exclusive authority is over Unitary Patents and European bundle patents.

However, one exception exists and it is during the 7-year transitional period (which is one time renewable), it will be possible to withdraw European bundle patents from the UPC’s authority, through an opt-out procedure. Opting out will be done in the opt-out Register of the UPC and this Register will be open 3 to 4 months before entry into force of the UPC.

This new Court is formed in both Central and Local/Regional Divisions. To that end, validity and infringement proceedings will largely be handled separately. In both divisions, qualified judges with a technical and legal background will be appointed.

The key impact of the Unified Patent Court will come from the international nature of its rulings as it will affect all contracting Member States that ratified the UPC Agreement.

Which countries are covered?

The UP and UPC will come into force at the same time and be closely linked, as it will only be possible to request unitary protection in respect of EU Member States which are also participating UP Member States that ratified the UPC Agreement. Without exception, the UPC will have exclusive jurisdiction for any Unitary Patent.

In principle, the UP/UPC system is open to the 27 EU members. However, Spain did not join the system and Poland and the Czech Republic both indicated that they will not become Member States. Furthermore, Croatia became a member of the EU after the adoption of the UP/UPC package and has not yet signaled whether it will join the system or not. Currently, when including Germany, 17 EU members have ratified the UPC Agreement, but additional countries will likely be part of the UP/UPC package once it starts (see map for details of countries).

What choices are available to patent proprietors and applicants?

Users in the EU will have one more option to consider for patent protection aside from national filings and conventional European bundle patents.

The opportunity for uniform protection across most of the EU will need to be balanced by the equally uniform impact of lapse and revocation. Moreover, the impact of the UPC being the only enforcement and validity forum will need to be studied.

With respect to patent enforcement, applicants and proprietors of European bundle patents will need to carefully review/audit their portfolio and to do so preferably before entry into force of the UPC. They will need to make reasoned and timely opt-out decisions for each of their European bundle patents and applications.

As part of this review/audit, a risk/benefit analysis will need to be conducted for each application/patent. To that end, one must consider the value of a single enforcement ruling across the validated territories versus the risk of the patent being revoked or limited across the same territories through one central decision.

In conclusion, there are many new and exciting opportunities for patent protection in the EU to look forward to in 2022, and important, informed choices need to be made!

GEVERS patent attorneys are eager to help you navigate this new filing option so please do not hesitate to contact us at marcom@gevers.eu