Europe's New Unitary Patent and Unitary Patent Court

The European Union is in the process of adopting a new Unitary Patent, a single patent expected to cover most European countries. Along with the Unitary Patent a new Unitary Patent Court is being formed to enforce those patents throughout member countries. This Unitary Patent differs from the current European Patent Community (EPC) application process which can be used to file a single patent application, but then can be issued as separate patents in a selected subset of European countries. The new Unitary Patent will be a single issued patent that is enforced throughout the numerous European countries participating in the Unitary Patent program. The Unitary Patent will undergo a single examination process, issue as a single patent, require payment of a single annuity fee each year to keep the patent in force rather than the separate fees paid to each country under the current system, and be enforced throughout the participating countries by a single court system.

It appears that most, but not all, of the countries of the European Union will participate in the Unitary Patent system. Individual countries are currently deciding whether to ratify the Unitary Patent Agreement, and the number of countries ratified is closing in on the number required for the Agreement to go into effect. Notable countries not planning on participating are Spain and Poland, while non-European Union countries such as Switzerland and Norway are unable to participate and will still require separate patent treatment. From the pace of ratification it is anticipated that the Unitary Patent System will go into effect in the latter part of 2016 or early 2017.

Once the Unitary Patent system goes into effect, it will exist for a number of years in parallel with the current systems of national patents and the European Patent Community (EPC) application process that leads to separate national patents. During this interim period, applicants for then-pending and newly-filed applications will need to “opt in” or “opt out” of the Unitary Patent system. This interim period is currently expected to last at least seven years, but it is planned that ultimately only the Unitary Patent option would become available.

Unified procedures, enforcement and associated unified costs are perceived to be among the principal benefits of the Unitary Patent. Reduced translation requirements and a single annual maintenance fee or "annuity" are aimed to reduce overall costs. The Unitary Patent will require payment of a single annual annuity fee, which is targeted towards the total combined fees of the four most frequently validated countries for European patents (United Kingdom, Germany, France and the Netherlands). Those interested in protection extending through numerous European countries will recognize a cost savings on those fees. With the Unitary Patent, however, it will not be possible to drop coverage in selected countries and thus reduce the fees to that charged by only one or two countries. The entire Unitary Patent must be either maintained or abandoned.

There are other conflicting interests presented by the Unitary Patent that stem from its unified nature. One concern is the opportunity for a unified validity challenge throughout the life of the Unitary Patent. Under the current EPC patent application system, there is a limited period for third parties to file a single opposition to the EPC “patent” that would issue into separate national patents. After the nine month opposition period expires for an EPC “patent,” nullity or invalidity proceedings may still be brought in the individual courts of various countries in efforts to invalidate or nullify the granted patent in those countries. The Unitary Patent will follow the same approach, including an initial period for third party oppositions followed by the ability to bring an invalidity action for the remainder of the patent’s life. However, the unitary nature of the Unitary Patent will enable third parties to use a single invalidity action against it. Under the current EPC system nullity proceedings must be separately pursued in each country selected and the results can be very divergent in different countries, with a challenge only being successful in some of the countries of interest. With the Unitary Patent, a single nullity proceeding could be pursued against the patent in court with a single unified outcome applicable throughout the member countries. This ability to pursue a single unified invalidity challenge throughout the life of the Unitary Patent is giving some patent owners reason to pause.

In addition to the Unitary Patent, a Unified Patent Court is being established to address issues involving Unified Patents. The Unified Patent Court will have exclusive jurisdiction to handle infringement and revocation proceedings involving Unitary Patents as well as to address decisions of the European Patent Office regarding Unitary Patents. During a transition period of some years, the Unified Patent Court will also have non-exclusive jurisdiction regarding European patents that do not have unitary effect. The trial court for the Unified Patent Court, referred to as the Court of First Instance, will be located in Paris with additional courts in London and Munich. The Court of Appeals will be located in Luxembourg. Additional Courts of First Instance may be added over time.

The unknown nature as to the manner in which Unified Patents will actually be enforced is another question that raises concerns among patent owners. This question, combined with the availability of a unified invalidity or nullity proceeding, prompt many to anticipate that many large companies will not opt for the Unitary Patent, at least initially. As further specifics surrounding the Unitary Patent system and their enforcement are developed, however, it will be easier for companies to determine whether the Unitary Patent represents the appropriate option.

Gardner Linn specializes in the protection, enforcement, and defense of intellectual property throughout the world, including patents, trademarks, copyrights, and trade secrets, as well as unfair competition and related agreements. Our attorneys are proficient at acquiring patents globally, including patents under the European Patent Convention and nationally throughout Europe. Our attorneys are highly skilled at complex litigation, which also enhances our ability to provide customized and effective intellectual property protection strategies.

If you have any related questions, please contact our patent attorneys at (616) 975-5500.