Facts about the new unitary patent and the new patent court
A milestone for the entry into force of the UP/UPC system was reached in January 2022 as the number of Member States having ratified the required legislation reached 13. The UPC’s provisional application phase (PAP) has therefore begun. The provisional application phase is the final phase of the Unified Patent Court’s set-up. During this phase the last parts of the preparatory works can be completed, budget and IT systems will be finalised and judges will be recruited. The provisional application phase is expected to last approximately eight months. When the preparatory work has progressed satisfactorily, the last step will be the ratification of the Unified Patent Court Agreement (UPCA) by Germany. The UPCA will then enter into force on the first day of the fourth month following the deposit of this instrument. The UP/UPC system could therefore enter into force even before the end of this year.
The EPO will introduce transitional measures to help patentees who wish to take advantage of the new UP/UPC system. The new measures will allow early request for unitary effect and/or that grant of patent applications to be delayed until after the UP/UPC-system has entered into force, so that they can fall within the new regime. Such early requests for unitary effect or delay of grant will be allowed to be filed as of the date of deposit of the Federal Republic of Germany’s instrument of ratification of the UPCA.
UP/UPC in general
In the future European patent court system, enterprises, universities and inventors will be given the possibility of representation by European Patent Attorneys having obtained an additional qualification. Users of the Unified Patent Court may thereby benefit from having their case including its scientific aspects presented to the Court by a technically qualified patent attorney.
At Inspicos we are fully aware that many future court disputes will require teams of patent attorneys and litigation lawyers, but at the same time we feel compelled to be qualified to represent before the Court in order to serve the needs of our clients. Therefore, so far 11 of our European Patent Attorneys have completed a one-year diploma course at the University of Strasbourg in France which at present is believed to fulfill the future requirements for the right to representation before the Unified Patent Court. We trust that this additional qualification will not only enable us to represent our clients before the Court, but that it will also allow us to provide counselling in relation to contentious matters at the highest level under the future European regime.
A summary of the new European patent system is provided below.
- The unitary patent will be applied for and granted by the EPO – just as European patents are today. However, in contrast to current European patents, the unitary patent does not need to be registered in each country in the agreement.
- When the system is fully implemented, unitary patents will cover most EU states. Spain and Croatia have, however, chosen to remain outside the new system for now.
- As the EPO continues to be responsible for grant of European patents, there will be no change in what can be patented – the new system only concerns what happens post-grant. Software as such, business methods and human embryos can therefore still not be patented in Europe.
- When a European application is approved for grant, the applicant must choose between
a. a unitary patent, in which the patent enters into force in all member states, or
b. putting it into force in each country, by “validating” it in various administrative processes.
- The new unitary patents should be seen as further options for a patentee to obtain patent protection – they are supplements to national patents and the existing European patents, which one will still be able to apply for and obtain.
- Existing, granted European patents cannot be converted to unitary patents, but – for those European patent applications which are pending when the new system enters into force – one will be able to choose between giving these granted patents unitary character, and validating them as per the current European patents.
- The new Unified Patent Court (UPC) will have jurisdiction in all cases concerning the new unitary patents. Decisions from the UPC have immediate effect in all participating countries. As far as the existing and future European patents are concerned, these will also be litigated before the new court, unless the patentee requests that they are to be litigated before the existing national courts (a so-called “opt-out”). There is, however, a deadline for “opting-out” – initially a period of seven years from the new system coming into effect. An opt-out will be valid for the entire lifetime of the patent, unless the patentee changes their mind and “opts-in”.
- The current renewal fees, which the patentee has to pay in each individual country, will be replaced in the case of unitary patents by a central renewal fee. The size of this fee is expected to correspond to the total sum of the renewal fees currently paid for the four most frequently validated countries by the holders of European patents.