The Unitary (pan-) European Patent

What is changing in the European patent landscape and what actions do patent owners need to take before April 1st 2023?

Introduction:

This document provides an important update to owners, inventors and parties interested in obtaining European Patents. If you have previously acquired existing patent rights via the European Patent Office, these rights will be unilaterally affected, possibly in an adverse manner. If so, you must take action by June 1^st 2023.  Therefore, we recommend that you speak with one of the members of the Optimus team to discuss your options further.

Current (Classical) European Patent system:

The current European Patent system, administered by the European Patent Office (EPO) provides a centralised patent application and examination process. When a European Patent is granted, an applicant is able to validate the patent to cover any number (or all) European Union (EU) States, plus a number of non-EU countries (including the UK), plus a number of countries that are not members of the European Patent Convention (EPC) (referred to as ‘extension states’). There are 39 states (i.e., countries) for which patent protection is available through the European Patent system, see https://www.epo.org/about-us/foundation/member-states.html.

FIG. 1 EPC Countries (red) and extension states (light blue)

Upon grant of a European Patent, the patent is split into a number/bundle of national patents when the patent proprietor ‘validates’ the European Patent in those countries where the proprietor wishes the patent to have effect. This European Patent system has operated since 1977, and the UK was a founding member of this system. Some of these countries require translations, either of the claims only, or the entire specification. Renewal fees have to be paid each year, to each of the validated countries’ Patent Offices. In this system, it is possible to start at grant of the European Patent with, say, five validation states, and then, over time, if certain countries become less important, to only maintain the patent in say two or three countries.

Under the current European Patent system, a centralised 9-month post-grant opposition period exists, following the completion of grant proceedings at the EPO. During this 9-month opposition period, any person or company can try to have the European patent revoked in its entirety for all the states in which the proprietor has validated the European Patent. After the 9-month post-grant EP opposition period has expired, no central opposition procedure exists. After the 9-month post-grant EP opposition period has expired, a third party can only seek revocation of the validated European Patent through revocation proceedings filed in each of the individual national courts. Notably, any decision from the national court of one state, e.g., a decision to either maintain or invalidate a patent in that state, is not binding in any of the other countries in which the European patent has been validated.

New Unitary European Patent and Unified Patent Court (UPC) system:

Unitary (pan-) European Patent

After many years of discussion, a major change to the European Patent system is scheduled to take effect during 2023. Applicants will still be able to apply for a classical European Patent, as before. However, in addition, applicants can apply for a European Patent with unitary effect (often referred to as simply a ‘unitary patent’). Additionally, a new, centralised court system for unitary patents is also being established. This court system is called the ‘unified patent court (UPC)’. A single renewal fee for the ‘unitary patent’ will be payable centrally each year, to the EPO. A single registration procedure for transfers, licenses and other rights will also exist.

The application and examination process will continue to be carried out by the EPO and is generally unchanged from the process now in place for the current European Patent system. The changes to procedure and cost only occur once the EPO has decided that a patent will be granted.

The unitary patent will, thus, soon offer a pseudo ‘pan-European’ granted patent, i.e., a single patent that will cover all the EU States that have acceded to the unitary patent system. There are currently 27 EU member states, but not all have yet acceded to the unitary patent system. The unitary patent protection system will thus run in parallel with the existing ‘classical’ EP system, with the patent applicants and proprietors able to select the system that best suits their aims for any individual patent application. The unitary patent will, thus, co-exist with national patents, and classically validated European patents.

For a few applicants, primarily those that have validated their granted European Patents widely and maintained the validated patents for many years (post-grant), the unitary patent may be considered to be advantageous over the ‘classical’ European patents. However, applicants and holders of existing European patents will still have to make decisions about which approach best suits them and their individual patent applications/patents.

Unified Patent Court (UPC)

The UPC will act as a single, centralised Court to oversee litigation matters for unitary patents, including revocation, injunctions, damages, entitlement disputes, declarations of non-infringement, etc. As the UPC is a part of the European Court of Justice (ECJ), its jurisdiction will also covers classical EP patents granted under the existing system, unless the proprietor “opts out” of the UPC, as explained in more detail below.  

A transitional period of at least 7 years is in force between changing from the classical system with decisions made by National courts, to a UPC-controlled unified patent system. During this time, applicants can opt for a classical EP patent rather than a unitary patent, at the time the patent is granted. These opt-outs will last for the lifetime of the patent, unless the proprietor decides to opt back in; however once opted back in, no further opt-out is possible. The UPC will share competency with the relevant national authorities. However, after the transitional period, the UPC will have complete jurisdiction to handle all patent legal proceedings within its EU remit, for a Unitary Patent.

Timescales

Following a further delay, introduced on 9^th December 2022, the unitary patent and UPC is scheduled to ‘go live’ on 1^st June 2023, with 17 out of 27 EU States expected to participate. A further 7 EU states are planning to ratify the unitary patent and UPC. The EU States that have not provided any indication to ratify include: Poland, Spain, Croatia. Non-EU countries, such as the UK, Switzerland, Norway, Turkey, Morocco and Tunisia are precluded from ratifying.

FIG. 2 Countries (red) that have ratified the unitary patent, non-EU countries (light grey)

and non-ratified counties (dark grey)

A (delayed) ‘sunrise’ period is now scheduled to begin on 1^st March 2023. During this period:

• Existing granted European patents can be ‘opted-out’ of jurisdiction of the UPC. Some applicants may choose this option with the aim of preventing a single revocation attack against their previously granted (classical) EP patent(s). If patent owners do nothing and do not register their patent(s) as ‘opted-out’, their patent(s) automatically transition to being unitary patents and risk the consequences of a single successful invalidity action removing their acquired Intellectual Property rights across multiple jurisdictions; and
• Early requests will be accepted for ‘unitary effect’ for pending EP applications that the EPO has accepted for grant.

Below, we summarise the main ‘pros’ and ‘cons’ for European Patent Owners to consider when determining whether the unitary patent or classical European patent route is the appropriate one for their business.

Unitary (pan-) European Patent & UPC

For existing patents, with a handful of validated states, or where the patent is less than 10 years’ old, there is no benefit from not ‘opting out’. If a patent has been validated in a large number of European (EU) states, for example 8 or more, and where the patent is more than 10 years’ old, a benefit in reduced renewal fees is likely to occur.

Classical European Patent

Issues for European Patent Owners/Proprietors to consider:

• Determine whether (or not) to Opt-out existing EP patents by 1^st April 2023, i.e., during the sunrise period, to avoid the risk of being subjected to a single revocation action removing all rights across multiple countries.
• If EP protection strategy is typically around 4 countries, e.g., GB, FR, DE, IT, then classical EP system is much less expensive over 10 years and more so over 20 years. However, if the EP protection strategy is, say, typically around 8 (or more) countries (excluding GB, CH, NO) then the unitary patent approach will be much less expensive over 10 years and more so over 20 years.
• If very confident in the strength of the patent and the claims, the Unitary patent may offer a financial benefit if desiring wide protection across many EU States and/or longevity of the European patent (c.10-20 years). We recommend that you contact us to determine the strength of your patent(s) if this is of interest to you.
• If a unitary patent is selected, it may be prudent to file a divisional application that can provide some potential future patent protection that is not at risk of the single revocation proceedings, whilst avoiding double patenting problems in the EP divisional application.
• Set up a Patent Observation Process on your competitors’ patents, for example to determine whether a single revocation action could/should be taken if the competitor had not ‘opted out’. We recommend that you contact us to set up such a program if this is of interest to you.
• Be careful with co-owner patents where any decision to request unitary effect of the EP patent should be made early. True owner/all co-owners must make requests to Opt-in/Opt-out. Exclusive licensees have no rights to make these decisions.

We recommend that you speak with one of the members of the Optimus team to discuss your options further. At Optimus, we will continue to provide you with bespoke advice for your specific patent portfolio/cases. We will cover the benefits and risks of using the unitary patent and UPC system. Our expert team can help with any queries or concerns you have. Please visit us at www.optimus-patents.com and/or contact us at This email address is being protected from spambots. You need JavaScript enabled to view it. or phone us on +44 1256 782938.