The Unitary Patent system introduces the Unitary Patent (UP), a new type of patent in
Europe providing uniform patent protection in 17 EU member states via a European
patent application. A newly set up international court called the Unified Patent Court
(UPC) will decide on infringement and validity of these Unitary Patents, as well as of
classic European patents which will remain an alternative. The Unitary Patent system
will enter into force on June 1st, 2023.
The states expected to participate in the Unitary Patent system are: Austria, Belgium,
Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany,
Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the
Netherlands, Portugal, Romania, Slovakia, Slovenia, and Sweden. The 17 current
Unitary Patent system member states are highlighted in bold. Spain and Poland have
chosen to not take part in the Unitary Patent system, while Croatia remains undecided.
What is the Unitary Patent?
The Unitary Patent will be a complement to the classic European patent, it will not
replace it. The Unitary Patent is based on a classic European Patent and will therefore
be prosecuted at the European Patent Office (EPO) under existing rules, including the
options for opposition and appeal. After a European Patent has been granted, it will be
possible to request unitary effect for the above-listed states, meaning the classic
European Patent is converted to a Unitary Patent. This option will be available for
European patents granted on or after June 1st.
The classic European Patent, on the other hand, remains to cover up to 39 states
including non-EU countries such as the United Kingdom. Hence, if you desire patent
protection in countries that are not members of the Unitary Patent system (but which are
member states of the EPC), you will have to also validate the European Patent in those
countries. In other words, the protection provided by one patent application may
comprise one Unitary Patent, covering 17 EU countries, and a European Patent having
effect in one or several additional countries.
What are the main differences between a European Patent and a Unitary Patent?
The classic European Patent requires you to actively choose, i.e. validate, which
countries you wish to have patent protection in. The validation procedure is a national
procedure that is associated with a cost that differs from country to country. The Unitary
Patent will not require validation, merely the filing of a single request. This will provide
patent protection in all states which are members of the Unitary Patent system at the
time of grant (currently 17).
Upon validation, the classic European Patent requires different degrees of translation.
For example, validation in Italy requires the entire application to be translated into Italian,
while validation in Germany, France, or the UK may not require any additional translation
at all. The Unitary Patent, on the other hand, will, for the coming 6-12 years, require the
filing of one translation of the complete patent into one additional EU language. After this
initial period, free machine translations are promised to replace all manual translations.
The classic European Patent requires payment of annual renewal fees in each validated
country, each country charging a different renewal fee which may be payable also at
different deadlines. The Unitary Patent requires payment of only one annual renewal fee
to the EPO. Currently, this annual renewal fee starts at 35 EUR for year 2 and ends at
4855 EUR for year 20.
What is the Unified Patent Court?
The Unified Patent Court (UPC) is a new court, spread out over several EU countries,
which will have exclusive competence in respect of Unitary Patents as well as in respect
of classic European patents validated in one or several of the member states of the
Unitary Patent system. Judgements made by the Unified Patent Court on infringement,
validity, and injunctions will be applicable over the entire jurisdiction of the UPC, i.e. for
all of the member states of the Unitary Patent system.
Classic European patents may be litigated before a national court, instead of the Unified
Patent Court, until at least May 31st, 2030; as long as no action has been taken before
the Unified Patent Court.
What are the main differences between litigation before a national court and
before the Unified Patent Court?
The classic European Patent requires, up until June 1st, the patent to be litigated in
every jurisdiction where a decision on infringement or validity is requested, meaning you
may have several parallel court proceedings running which eventually may lead to
different decisions and high costs.
The validity and/or infringement of a Unitary Patent, on the other hand, is decided by the
Unified Patent Court only. Hence, if a Unitary Patent is found to be infringed, it will be
considered infringed in all member states of the Unitary Patent system. Correspondingly,
if the Unitary Patent is found to be invalid, it will be considered invalid in all member
states – the patentee effectively losing the patent in all Unitary Patent system member
states at once. Furthermore, injunctions may be granted across all Unitary Patent
system member states. The Unified Patent Court is available also for classic European
Patents as of June 1st.
Action taken before a national court requires nationally authorized attorneys, and each
national court charges an individual fee for filing an action. Action before the Unified
Patent Court requires attorneys authorized before the UPC, as well as payment of one
court fee comprising a fixed fee and, when the value of the case is above 500,000 €, a
value-based fee. The fixed fee is currently set to 11,000 € for an infringement action and
20,000 € for a revocation action. The value-based fee is based on an estimated value of
the case put forward by the claimant and varies between 2,500 € and 325,000 €. Small
and micro-entities can get a 40 % reduction in court fees.
National court proceedings are lengthy. The timeline for litigation before the Unified
Patent Court is, on the other hand, very tight as judgment in the first instance is to be
expected approximately one year after the filing the action.
What do “opting in” and “opting out” of the Unitary Patent system mean?
If you choose the Unitary Patent, you also opt-in to the Unified Patent Court, i.e. your
Unitary Patent can only be litigated before the Unified Patent Court.
For at least 7 years after the Unitary Patent system comes into force, patentees will be
able to opt-out of the system, maintaining the patent as a classic European Patent only
and forcing issues such as infringement and validity of the patent to be decided in
national court only.
The patentee can only opt-out of the Unified Patent Court if no action has been brought
before the Unified Patent Court. After having opted out, the patentee will have one
chance to opt back in, provided action has not already been brought before any national
court. By opting in, your classic European Patent will be litigated before the Unified
Patent Court only.
Unitary Patent of classic European Patent? National court or Unified Patent Court?
This depends on several factors you need to consider regarding your technology as well as your business and business area. For example:
· In how many countries do you need patent protection?
· How large is your, and your competitors’, market?
· How important is the patent?
· How strong is your patent?
· Do you have parallel protective rights?
· Is your invention being, or at risk of being, copied?
· How litigative is your business area?
We at Nordic Patent Service are ready and able to help you make the best choice for your business!