Unitary Patent

On 1 June 2023, the regulations of the Unitary Patent System entered into force and the Unified Patent Court commenced its operation.

Unitary Patent

What does this mean?

In contrast to the current system in which, following a centralized grant procedure, a granted European Patent automatically converts into a bundle of individual national patents upon validation in each country of interest, the new system offers the possibility of uniform validation, i.e. the protection afforded by a European Unitary Patent will extend to all of the 17 member states of the European Union participating in the new system (“participating member states”).

Thus, although there will be no change in the grant procedure, it will be possible to gain patent protection in all 17 of these states without the need to validate the granted patent in each state individually. Such a patent is referred to as “patent with unitary effect” or “Unitary Patent”.

The Unitary Patent offers simultaneous protection in each of the participating member states. These are currently the following countries:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden.

More states such as Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia are expected to join in the near future.

The Unitary Patent System offers a centralized procedure in protecting and defending patents across the European Union. Under the new system, one single court, the Unified Patent Court, will be responsible for both infringement and nullity proceedings concerning Unitary Patents. Verdicts of the Unified Patent Court will be enforceable in all participating member states in which the respective patent is in force. This applies to both infringement and nullity actions, i.e. the Unitary Patent can be enforced in a centralized manner, but also revoked.

The procedure leading to the grant of a Unitary Patent will continue to be conducted by the European Patent Office. Thus, there will be no change to the current examination procedure, including the examination of formal requirements upon filing, substantive examination and grant. The possibility of opposition and appeal proceedings before the EPO will also remain unchanged

Following the grant of the patent, the patent proprietor will have the choice of either individually validating the patent in selected countries (i.e. validating the patent via the current route as a “classical” EP-patent) or validation as a Unitary Patent by filing a request for unitary effect, thus gaining protection in all participating member states. Should validation as a Unitary Patent be chosen, payment of only a single annuity for all participating member states will be required and the Unitary Patent will be subject to the exclusive jurisdiction of the Unified Patent Court.

Even where protection via a Unitary Patent is chosen, in order to obtain patent protection in those EPC contracting states that are not (yet) participating members of the new Unitary Patent System, it will remain possible to additionally validate the patent in these states via the classical validation (i.e. national) route.

Opt-in or Opt-out

The jurisdiction of the Unified Patent Court will not be limited to only Unitary Patents but will also apply to both classical European patents which are granted after the Unitary Patent System has entered into force as well as previously granted (classical) European patents to the extent that they remain in force in one or more participating member states of the Unitary Patent System. As soon as the Unitary Patent System comes into force, it will automatically apply to all granted European patents, i.e., in addition to the various national courts, also the Unified Patent Court will have jurisdiction over infringement and nullity actions concerning granted classical European patents. This will have the advantage for patent proprietors that a potential infringement in more than one country can be dealt with in a single, centralized procedure. However, it will also carry the simultaneous risk that the patent may be declared invalid for all countries through a single invalidity action. In parallel, bringing infringement and invalidity actions before the national courts will remain possible.

The Unitary Patent System will have no effect on patents already granted in terms of territorial extension and the payment of annuities. Even though the patent can be centrally enforced in all countries in which it is in force, the protection provided will not extend to any additional countries. For example, a patent that is in force in Germany and France at the start of the new system, will retain its effect for those countries. However, a verdict obtained through a single decision of the Unified Patent Court in respect of said patent, e.g. in infringement proceedings, could be enforced in both countries.

In order to avoid the Unified Patent Court having jurisdiction over classical European patents (irrespective of whether granted prior or subsequent to the start of the Unitary Patent System), the patent proprietor has the option during an initial transitional period of 7 years (potentially extendible to 14 years) following the commencement of the Unitary Patent System to file a request to opt a patent out of the new system. Once registered, an “opt-out” will normally remain in force for the entire life-time of a European patent, i.e. irrespective of whether the transitional period subsequently expires during the patent term, unless the proprietor actively decides to participate in the new system by opting their patent back in (“opt-in”). Should, for instance, the patent proprietor subsequently wish to enforce their patent in centralized proceedings before the Unified Patent Court, the opt-out request may be withdrawn at any time as long as no proceedings are pending before the national courts.

Unitary Patent or classical EP-patent?

When deciding which validation system to choose, the “classical” system with its national validations or the “new” system with is unitary validation, a number of factors may be of relevance.

In anticipation of the start of the Unitary Patent System, some preparatory steps should be taken:

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