Is the European Patent System’s New ‘Unitary Patent’ Right for You?
January 18, 2023
Originally published on November 16, 2022 and updated on January 18, 2023.
In the past, after prosecuting an application before the European Patent Office (EPO), the patent owner had to decide in which countries of the European Patent system to validate the European Patent. That choice required reviewing the countries where the owner’s commercial activities (and possibly the owner’s competitor’s activities) occurred, among other considerations, and then validating the patent in the selected countries. Depending on which country or countries were selected, translations of the claims or the entire specification may have been required. The new European Patent System is expected to begin using a “Unitary Patent” on June 1, 2023, with a “sunrise period” starting on March 1, 2023.
The Unitary Patent
The Unitary Patent ultimately will make it possible to obtain patent protection in up to about 25 of the participating member countries of the European Patent Convention by filing a single document and paying one “set” of fees. At present, the participating Unitary Patent countries are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden. Other countries of the EU are expected to join at a later date. However, it is important to note that the countries that are not a party to the Unitary Patent system—such as UK, Spain, Poland, Switzerland, and Turkey—will continue to require validations, translations (as needed), and annuities to maintain patents in force in those countries.
This means that in the participating Unitary Patent countries, separate translations and annuities will no longer be required. Rather, only a translation of the application into English (if prosecuted in French or German) or into any other EU language if the application was prosecuted in English will be required. And only a single annuity payment per year will be required to maintain the Unitary Patent in force in the Unitary Patent member countries.
Advantages of the Unitary Patent
The principal reason to opt for a Unitary Patent over the current individual country validation/annuity system is cost. Again, only one translation of the application will be required. However, the Unitary Patent system’s cost savings truly will be enjoyed through the long-term savings in annual and accumulated annuities.
As a rule of thumb, the costs for a Unitary Patent are break-even or about equal to the cost of obtaining and maintaining a validated European Patent, in about four countries. If patent protection is sought and obtained in more than 4-5 countries, the cost-benefit weighs in favor of the Unitary Patent. Conversely, if patent protection is desired in less than four countries, the cost-benefit likely lies with validating and maintaining a standard European Patent in the individual countries.
The Pros and Cons and the Unified Patent Court
Despite the anticipated cost savings, there are drawbacks to the Unitary Patent. One of the tradeoffs of a Unitary Patent is that it is a single patent subject to the exclusive jurisdiction of a newly-formed Unified Patent Court (UPC). This is in contrast to current European Patents that are validated in individual countries and effectively stand on their own in each country. That is, invalidating a current European Patent in one country has no effect on that same European Patent in any other country. This is not the case with the Unitary Patent which, if invalidated by the Unified Patent Court, is invalid in all of the countries of the Unitary Patent system.
If you have a large portfolio of highly-valuable Unitary Patents, you may want to consider that the validity of those patents will rest with a single, newly-formed court with no established track record. If your Unitary Patent is found to be invalid (or revoked), you will lose rights in all of the Unitary Patent member countries. Therefore, it is important to evaluate and balance the risk of possibly losing a Unitary Patent in a single court action against the reduced costs for obtaining and maintaining the Unitary Patent. We expect this risk analysis will vary on a patent-by-patent basis when considering, among other things, the relevant technology and prior art.
On the other hand, if your Unitary Patent is found by the UPC to be valid and infringed, that ruling will extend to all of the Unitary Patent member countries.
In addition, talks are currently ongoing regarding Supplemental Protection Certificates (SPCs) that will apply to Unitary Patents throughout the participating member countries. SPCs extend the duration of rights to various regulated, biologically active agents, namely human or veterinary medicaments, to compensate for the time needed to obtain regulatory approval and authorization to market these products.
There are many factors to consider in deciding whether to obtain a Unitary Patent, including:
- The consequences of losing the Unitary Patent. Patent holders should consider the possibility of losing the Unitary Patent in a single court action versus the reduced costs for obtaining and maintaining the single Unitary Patent.
- Cost. The cost to obtain and maintain a Unitary Patent may be considerably lower than your present costs. We believe that the tipping point is about four countries, and if you wish to seek patent protection in more than four Unitary Patent member countries, then a Unitary Patent generally makes sense.
- Jurisdiction. Another factor to consider is where patent protection is typically sought. If, for example, a European Patent is typically only validated in Germany, France, and the UK (and remember, the UK is not part of the Unitary Patent system, but it is expected to remain part of the European Patent system), then the Unitary Patent is likely not for you. On the other hand, if you have a large portfolio that extends over many of the participating member countries, then the Unitary Patent may be the best fit for your situation.
- Opt-out provisions. A further consideration is that owners of European Patent national validations (that is, European Patents that are validated in EPO member countries through the present system) have an available “opt-out” of the jurisdiction of the UPC. This opt-out is presently part of transitional provisions expected to be in place for the next several years. Unitary Patents, however, have no such opt-out available and, as such, are subject to the exclusive jurisdiction of the UPC and a single invalidity or revocation proceeding.
Patent owners with portfolios that extend across a number of European countries should consider whether the upcoming Unitary Patent is the right option for their portfolios. It is expected that the Unitary Patent and Unified Patent Court will come into effect in early 2023. So, while there may be time to consider whether the Unitary Patent route is right for your portfolio, it is best to start considerations now so that a well-grounded strategy is developed well in advance of the effective date.