Unitary Patents – The Essential Facts

We continue to explore the proposed new system for Europe and in this blog post, we will focus on the proposed Unitary Patent and what it actually means.

The European Patent Convention (EPC), which established the European Patent Office (EPO), and came into force in 1978, always envisaged that one day there would be a single or “unitary” patent in Europe.  Back then, no one thought it would take quite as long as it has!

Nearly 40 years later, in January 2017, the Preparatory Committee of the Unified Patent Court (UPC) signalled that the Unitary Patent and UPC system could become operational as of 1st December this year, IF both the UK and Germany would ratify the UPC Agreement before the end of August 2017. However,  this was always going to be a big “IF”.  Indeed, with the surprising announcement that the UK will hold a general election on June 8th 2017, it is now likely that the commencement date will, once again, be pushed back, probably to Spring 2018.

European Patent with Unitary Effect

However, we will still not have a single patent covering all of the 38 Contracting States of the EPC as was first envisaged, nor will it be a single patent covering all of the 28 Member States of the European Union (EU).

Instead it will be a “European Patent with Unitary Effect” (EPUE), only covering those EU countries which have ratified the UPC agreement. As the agreement has been brokered by the EU, the new Unitary Patent will only cover participating EU Member States within the EPC system, i.e. non-EU countries within the EPC (Switzerland, Liechtenstein, Norway, Turkey, Monaco, Iceland, Macedonia, San Marino, Albania and Serbia) will always be outside the jurisdiction of the UPC and European Patents with Unitary Effect.

In order for the agreement to come into force, a minimum of 13 countries must have ratified the agreement, including UK, France and Germany. The agreement will come into force four months after the date on which the later of France and Germany ratifies the UPC Agreement. The Netherlands and Italy are the most recent countries to ratify, bringing to 12 the total number of countries that have ratified to date, namely, the following:

AT Austria DK Denmark IT Italy NL The Netherlands
BE Belgium FR France LU Luxembourg PT Portugal
BG Bulgaria FI Finland MT Malta SE Sweden

So, to begin with, the new Unitary Patent will cover the above listed countries that have already ratified, as well as the countries that are expected to ratify during the coming months, namely, the United Kingdom, Germany, Latvia, Estonia and Hungary.

Further countries likely to ratify soon after the UPC comes into force include Lithuania and Romania. Latvia, Cyprus, Czech Republic, Slovakia, Greece, are likely to take longer; as well as Ireland, which must hold a referendum enable ratification of the UPC Agreement.

Spain and Croatia have stated that they will not sign the agreement; Unitary Patent will cover up to 26 out of the present 28 Member States of the European Union with a single patent, but unfortunately we will not be able to call it an EU Patent.

Unitary Patents Map

Unitary Patents and the new Unified Patent Court

All Unitary Patents will fall under the exclusive jurisdiction of the new Unified Patent Court. This is the single most important consideration for anyone considering patent protection in Europe via the option of a Unitary Patent. The proposed new system for Europe (under EU Regulations 1257/2012 and 1260/2012, or “Unified Patent Court Agreement”) establishes a whole new transnational patents court regime for Europe which will be discussed in subsequent blog posts that will focus on the Unified Patent Court (UPC).

The most important question about Unitary Patents

In our view, the single most important question to be considered is “Do I want my granted patents in Europe to fall under the jurisdiction of the new Unified Patent Court?” If not, the only way to avoid this during the first 7 years of operation of the UPC, is (1) not to request a Unitary Patent, and (2) register an “opt-out” at the UPC Registry, while validating in EU countries via the classical European Patent Bundle.

After the agreement comes into force, all patents granted by the EPO which cover EU Member States participating in the Unitary Patent system will be subject to the exclusive jurisdiction of the Unified Patent Court, unless the applicant registers an “opt-out” at the UPC Registry.

Sunrise in Dublin
Sunrise over Dublin docklands and the River Liffey, May 21st 2017, Dublin, Ireland

Sunrise period for Opt outs

A “Provisional Application Phase” will begin three months before the UPCA comes into effect after the UK and Germany will have completed the ratification process. This “Provisional Application Phase” includes a “sunrise period” for accepting opt outs for existing European patents and applications. This sunrise period may start at the beginning of 2018 assuming a Spring 2018 start date for the UPC system, when it will be possible to file opt outs at the UPC Registry, prior to the UPC system coming into force.

We will discuss practical aspects of  “opt-outs” in general and, in particular, during the Sunrise Period in our next blog post.

Marie Walsh and Elizabeth Jennings

22nd May 2017

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