Unitary Patent System in Europe

The Parliament of the European Union (EU) voted on 11 December 2012 to create a Unitary Patent System (UPS) with a single Unitary Patent (UP) with effect throughout the EU. The UPS will come into effect upon the later to occur: ratification by at least 13 EU states including at the least the U.K., France, and Germany; or on 1 January 2014.

The EU Parliament vote, in its decision of 11 December 2012, follows the earlier European Council decision of June 29, 2012¹. Assuming the last step toward the creation of the UPS is successful (i.e. the ratification of the international agreement creating a Unified Patent Court by 13 EU states including UK, France and Germany), the UPS will come into effect in 25 of the 27 EU member states, the exceptions being Spain and Italy that so far have opted out of the System².

The UPS will provide an option to give a granted European Patent a unitary effect within the UPS participating members. A Unitary Patent (UP) will be a European patent granted regularly by the European Patent Office (EPO) to which unitary effect for the territory of the 25 participating states is requested by the patentee.

Unlike the existing system where the European patent granted by the EPO is in fact a bundle of national rights, the UP will be a single, indivisible right enforced (in the case of patent infringement) through a single court action; and equally, may also be invalidated in a single invalidation court action. Once the UPS enters into force, the option to give unitary effect to a European patent will be available for all European patent granted after that date.

It is to be borne in mind that member states of the European Patent Convention (“EPC”) include also non-EU states, such as Switzerland and Norway, and there will be a continued need to validate the patent granted by the EPO in such states in order to secure patent rights there.

The EPO will continue operating with three official languages: English, French and German. However, after grant of a UP and during a transitional period of 12 years, the patentee will have to translate the UP into only one other EU language. After the transitional period, there will not be any translation requirements. These reduced translation requirements may significantly impact the costs of patent protection in Europe and, in certain cases, may result in cost reductions of up to 80%3.

The UPS will have a Court of First Instance that includes a Central Division that is split between Paris, London and Munich, each of which will have specific technological specializations⁴. The Court of First Instance will also include local and regional divisions having jurisdiction over infringement actions in their specific region or over actions involving a defendant having a seat in that region.  The UPS will have a single Court of Appeal located in Luxembourg. Paris will also be the seat of the UP Registry and of the office of the UPS President. The UP jurisdiction is intended to have exclusive competence over both UP and classical European patents. However, during a 7-year transition period, owners of classical European patents will have an opt-out option to choose whether their European patent falls under the competence of the UP jurisdiction.  

As noted, the UPS will have a significant impact on the costs for obtaining pan-EU patent protection. Applicants who would like to ensure broad geographical coverage in Europe and have pending applications may, if feasible, be wise to delay proceedings insofar as possible so that the grant of patent will occur after 1 January 2014, when the UPS is expected to come into effect.

¹ As reported in one of the articles in our September – October Newsletter.
² Spain and Italy filed an action at the European Court of Justice (ECJ) against the European Council’s earlier decision for the creation of the UPS in 25 of the 27 EU states. On the same date – 11 December – Advocate-General Yves Bott submitted an opinion to dismiss this action. The ECJ is not bound by but usually follows the opinions of the Advocate General.      
³ It is to be noted that under the London Agreement that currently applies to the existing EP patent regime, certain EPC member states including the UK, France, Germany, and other EP states, have agreed to waive the requirement for translation of a patent into their local language. Thus, if protection is sought in some selected EP states, it may, at times, still prove more cost effective to proceed under the existing patent regime and not through the UPS. 
⁴ The London Central Division will have jurisdiction over cases in the fields of chemistry, methodology, pharmaceuticals, the life sciences and human needs; the Munich Central Division will have jurisdiction over cases in the fields of mechanical engineering, lighting, heating, weapons and blasting; the Paris Central Division will have jurisdiction over the fields of transportation, textiles, paper, construction, physics and electricity.