Unitary Patent & Unified Patent Court

The Basics

• + How did the unitary patent come about?

  The European Patent Office (EPO) currently issues European patents for the participating contracting states, which, once granted, are essentially a collection of national patents ("bundle patents") and hold the same legal standing as a nationally granted patent in the respective contracting state. In cases where a patent infringement occurs within the European internal market, the patent holder typically needs to initiate separate patent infringement actions in each individual contracting state. This leads to significantly high legal costs for both the patent holder and the alleged infringer. Furthermore, court decisions may vary in terms of content, resulting in a product being prohibited in one part of the EU and not in another. This situation was increasingly seen as unsatisfactory.

  Various attempts were made to address this issue, including an initial EU-level effort to establish an EU Community patent similar to the EU Community trademark and EU Community design. However, the corresponding legislative proposals failed to gain sufficient ratification. An important counter-argument was the concern that creating a parallel EU patent office alongside the already successful European Patent Office could undermine the desired harmonization of the patent system across Europe.

  To overcome these challenges, an alternative approach was adopted that incorporated the European Patent Office. This approach leveraged a provision explicitly outlined in the European Patent Convention (EPC), which allows the European Patent Office to grant a unitary patent for a group of contracting states (Art. 142 EPC). Since all EU states are also member states of the European Patent Convention, the initial intent was to grant a unitary EU patent for the entire EU through the European Patent Office. However, due to objections from Spain and Italy, this initiative proceeded without them using the newly established mechanism of "enhanced cooperation" with other EU member states. To facilitate this, the foundations for the "unitary patent" (EU Regulation no. 1257/2012), an applicable translation system (EU Regulation No. 1260/2012), and a unified patent court system (Agreement on a Unified Patent Court) were agreed upon for the participating states of this enhanced cooperation. Italy has since reconsidered its position and joined the Unitary Patent System.

  The current member countries of the Unitary Patent System include: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Austria, Portugal, and Sweden.

• + What is the Unitary Patent?

  The European patent with unitary effect, commonly known as the "unitary patent," is a patent granted by the European Patent Office (EPO) that holds validity and effect across all member states of the Convention. It possesses uniform legal standing in all these states, enabling a single unified court decision to be reached for all of them in a single legal proceeding. This uniformity applies to both the determination of patent infringement and the assessment of the validity and legitimacy of the Unitary Patent.

  In a single court case, the scope of protection afforded by the Unitary Patent is interpreted with regard to a specific alleged act of infringement. This interpretation is then applied consistently and simultaneously to all European Union (EU) states covered by the Unitary Patent, without any deviations at the national level. This results in a single legal title that can be enforced uniformly in all EU states covered by the Unitary Patent. This legal framework is further outlined in EU Regulation No. 1215/2012, commonly referred to as "Brussels Ia."

• + What are the Advantages of the Unitary Patent?

  The Unitary Patent offers several advantages:

  1. Single Annual Renewal Fee: A single annual renewal fee covers all EU states included in the Unitary Patent. This simplifies the process by eliminating the need to pay different renewal fees in various states, potentially on different dates.

  2. Simplified Implementation: Unlike previous "bundle" patents, which required individual validation in each country, the Unitary Patent can be implemented with a single, streamlined procedure.

  3. Unified Enforcement: Alleged patent infringements in EU member states covered by the Unitary Patent can be pursued through a single court case, removing the necessity for legal actions in each individual EU member state. This concentration of prosecution and legal costs streamlines the process and prevents conflicting court decisions in different states.

  4. Harmonized Patent Protection: The Unitary Patent's unitary effect harmonizes patent protection across all covered EU states. This eliminates the need for separate assessments of the scope of protection in each EU state, accounting for national nuances, particularly in cases of equivalence-based infringement.

  Overall, the Unitary Patent system simplifies administrative processes, reduces legal complexities, and fosters harmonization in patent protection across the European Union.

• + What are the Disadvantages of the Unitary Patent?

  The European patent with unitary effect, or "unitary patent," presents some distinct characteristics and limitations:

  1. Centralized Restriction or Revocation: The unitary patent can be restricted or revoked centrally in a single court proceeding, and the decision applies to all EU states covered by the unitary patent. This means that even if an alleged infringement is being considered in only some of these EU states, the patent holder cannot choose a different restriction strategy in another EU member state for a different alleged act of infringement.

  2. Cost Implications: In cases of Europe-wide alleged patent infringement, the option of conducting a cost-effective pilot trial limited to Germany and then settling for the entire European territory based on these proceedings is no longer possible. Instead, the costs of the associated court proceedings are calculated automatically based on the respective aggregated values in dispute in all EU states covered by the unitary patent.

  3. No Selective Elimination: It is not possible to selectively eliminate individual EU states covered by the unitary patent. The unitary patent must be maintained or dispensed with as a whole, and it cannot be adjusted to exclude specific territories, such as a cost-saving measure by reducing the protected territory to save on annual fees.

  These limitations emphasize the importance of careful consideration and strategic planning when using the unitary patent system, as it significantly impacts the options available to patent holders in terms of protection and enforcement.

• + How do you obtain a Unitary Patent?

  The process for obtaining a unitary patent involves the following steps:

  1. Initiating a Patent Application: The patent applicant begins the patent application process by filing an application with the European Patent Office (EPO), following the standard procedures.

  2. European Patent Grant: If the EPO decides to grant the patent, the patent applicant has the option to request the grant of a unitary patent for the EU states covered by the European patent with unitary effect ("unitary patent") instead of pursuing separate national patents for each of those states.

  3. Request for Unitary Patent: To request the unitary patent, the patent applicant must submit an application to the European Patent Office. Importantly, this request is free of charge. However, it's essential to note that a translation (as outlined below) must also be submitted along with the application.

  This process allows patent applicants to consolidate their protection in EU member states covered by the unitary patent, streamlining the administrative process and reducing costs compared to obtaining separate national patents.

• + What are the Costs of the Unitary Patent?

  The cost considerations for a unitary patent are as follows:

  1. Costs Before Grant: The costs for obtaining a unitary patent are initially the same as those for a standard European (bundle) patent. These costs cover the proceedings before the European Patent Office (EPO).

  2. Translation Savings: One significant advantage of the unitary patent is that, since it is granted in the language of the proceedings before the EPO, there is no need for additional translations of the patent specification. This can result in cost savings compared to a conventional European (bundle) patent, where translations are often required to meet national requirements in different contracting states.

  3. Translations for Transition Period: A translation of the Unitary Patent into another official language of the EU is only necessary for a transitional period of a maximum of 12 years if the Unitary Patent was granted in English. Otherwise, a translation of the application text must also be submitted in English.

  4. Annual Renewal Fees: The annual renewal fees for maintaining the Unitary Patent after it has been granted are designed to be essentially equivalent to the renewal fees for the four contracting states for which a European (bundle) patent is most frequently validated. For example, the renewal fees for the Unitary Patent currently stand at €35 for the second patent year, €1,175 for the tenth patent year, and €4,855 for the twentieth patent year.

  These cost structures reflect the advantages and cost savings associated with the unitary patent system, making it an attractive option for patent holders seeking protection in multiple EU member states.

• + What Protection does the Unitary Patent offer?

  The Unitary Patent provides the same level of patent protection as a traditional European (bundle) patent granted by the European Patent Office (EPO). The primary distinction lies in the jurisdiction for legal proceedings:

  1. Unified Patent Court (UPC): The Unitary Patent cases will be heard by the Unified Patent Court, a specialized European court established to handle patent disputes, including those involving the Unitary Patent. The UPC aims to streamline patent litigation across EU member states covered by the Unitary Patent.

  2. Opt-Out Provision: During a transitional period, existing European (bundle) patents will have the option to opt out of the jurisdiction of the UPC. In such cases, national infringement courts in the respective EU member states would retain jurisdiction over those patents.

  It is important to note that the extent to which the UPC may deviate from previous practices, such as those of German courts, in its judgments remains uncertain. The legal landscape is continually evolving, and predicting how the UPC will interpret and apply patent law is challenging. As such, it is advisable for patent holders to stay informed about developments in patent law and engage legal counsel experienced in patent matters to navigate potential differences in court decisions.

Representation

In addition to attorneys-at-law, European patent attorneys with an additional qualification will also be authorised to act as sole representatives before the Unified Patent Court (see "Representation"). This applies to all local and regional courts as well as to the central division. Our firm will be able to represent you before the Unified Patent Court in all proceedings.

• + Can a company be represented by an employee, e.g. from the patent department, similar to the European Patent Office?

  No, an employment relationship with the party alone is not sufficient for representation. A representative always requires authorisation to represent as a lawyer or as a representative before the European Patent Office who is qualified for the Unified Patent Court. However, it has not been fully clarified whether employed in-house lawyers or patent attorneys are authorised to appear before the Unified Patent Court, even though this is widely assumed. Our law firm will be able to represent you before the Unified Patent Court in all proceedings.

• + Can I be represented before the Unified Patent Court by my patent attorney, or do I have to consult a lawyer?

  European patent attorneys who have an additional qualification may act as sole representatives before the Unified Patent Court. You therefore do not necessarily have to consult a lawyer. Our law firm is able to represent you before the Unified Patent Court in all proceedings.

• + Do the parties have to hire a lawyer and a patent attorney?

  No, a single representative is sufficient by law. This representative can be a lawyer or a patent attorney. Nevertheless, it may be advisable to conduct proceedings before the Unified Patent Court with the assistance of a lawyer and a patent attorney together, especially in complex and technically demanding cases. Our law firm has a long-established network of excellent law firms specialising in the field of intellectual property law.

• + What about the reimbursement of costs?

  The principle of cost reimbursement applies before the Unified Patent Court, i.e. the loser must pay the legal fees of the winner. Both attorney's fees and patent attorney's fees can be claimed. However, before the Unified Patent Court, in addition to the possibility of the court splitting the costs - as is also known from German proceedings - there is also the possibility of the court only partially recognising excessive costs incurred by the winning party as recoverable. There is a kind of "cost cap" depending on the value in dispute, but this is set relatively high and is only intended as an absolute upper limit. It remains to be seen whether and how the Unified Patent Court will deal with the reimbursement of costs.

• + Is a patent proprietor bound as a party to the representative who conducted the examination proceedings before the European Patent Office?

  No, the proceedings before the Unified Patent Court are independent of the proceedings before the European Patent Office. In particular, it is also possible that the representative who conducted the examination proceedings before the European Patent Office is not authorised to appear before the Unified Patent Court.

• + What are the advantages and disadvantages of the Unified Patent Court compared to the previous national procedures?

  The advantage of the Unified Patent Court is the possibility of being able to conduct a patent infringement case centrally for all relevant countries of a European patent that are also member states of the Agreement. There is also a right to reimbursement of costs before the Unified Patent Court. In the event of infringement in several countries, this means considerable savings and also the avoidance of different court judgements. However, the costs will probably be higher compared to purely German proceedings. One advantage over German proceedings is that infringement and invalidity are examined at the same time, so that the currently striking difference in the duration of proceedings between the Federal Patent Court and the infringement courts in Germany, the so-called "injunction gap", does not occur. This means increased legal certainty for all parties involved.

• + I do not want to conduct any patent disputes at European level, but only at national level. What do I have to do?

  In order to block your "classic" bundle patents before the jurisdiction of the Unified Patent Court, you can register a so-called "opt out" for a transitional period. You can also increasingly rely on purely national patents, which remain subject to the jurisdiction of the national courts. Another alternative, albeit limited to Germany, is to branch off a utility model.

• + We would like to use the unitary patent and the Unified Patent Court, but we fear the centralized nullity action, which could destroy a valuable asset across Europe in one fell swoop. What strategies are there to minimize this risk?

  One possible way is to increasingly rely on divisional applications that have a slightly different scope of protection compared to the parent patent and can serve as a backup, possibly as a classic bundle patent and with an "opt out". You can also prosecute a patent with an identical scope of protection in parallel as a German national patent, provided that no opt-out is applied for for the European patent, as the previously applicable double protection prohibition has been lifted.