In 2022, a new patent and a new court system starts in Europe. The new Unitary Patent is a European patent, which on request of the applicant, will have direct unitary effect in all participating Member States after grant. The new Unified Patent Court will handle infringement or revocation of European patents for all participating EU member states at once.

A. Unitary Patent

The Unitary Patent builds on the existing EPO system. The filing and examination of an EP patent application remains as it is. Once a European patent has been granted, the applicant can file a request for unitary effect within one month after the mention of the grant of the EP patent.

• Geographical Scope of the Unitary patent

  This unitary patent will have direct unitary protection in the following participating states:

  Austria	Germany	Netherlands	Belgium	Greece	Portugal
  Bulgaria	Romania	Hungary	Cyprus	Ireland	Slovakia
  France	Italy	Czech Republic	Denmark	Latvia	Sweden
  Estonia	Lithuania	Luxembourg	Finland	Slovenia	Malta

  In all other members of the European Patent convention (e.g. UK, Spain, Switzerland), the unitary patent will just be a normal European patent (as before) which needs to be validated in each specific country.

• Unitary effect of the Unitary patent

  A Unitary Patent provides uniform protection and has equal effect in all the participating Member States. It may only be revoked or lapse in respect of all the participating Member States. It can however be licensed in respect of a part of the territories of the participating Member States.

• Which patents are eligible for unitary patent?

  A Unitary Patent may be requested for any European patent granted on or after the date of entry into force of the UPCA (Unified Patent Court Agreement). The EPO will announce this date, which is expected to be in fall 2022, on its website.

• The benefits of the unitary patent

  Instead of validating their European patent in several states, which is time-consuming, expensive and complex administrative process, patent proprietors can now obtain a Unitary Patent by filing a single request with the EPO. The procedure for obtaining a Unitary Patent is very simple and straightforward and entirely free of charge.

  No more validation process is necessary, no translations need to be filed and no local agents are required. Unitary Patent proprietors pay one single renewal fee to the EPO. The amount of the renewal fee is expected to be equivalent to the combined renewal fees of the top four countries

B. Unified Patent Court (UPC)

The Unified Patent Court has exclusive competence in respect of

• Unitary patents and

• European patents.

  Infringement or revocation will be decided for all states at once at the Unified Patent Court.

  For classic European patents there is a transitional period of seven years. During this period, actions for infringement or revocation may still be brought before national courts. Moreover, patent owners have the possibility to opt out of the UPC's competence for their patent or application by notifying the Registry of the UPC (not the EPO). Moreover, it will be possible to opt out even before the UPCA enters into force ("sunrise period").

  This option of opting out or bringing an action before a national court during the transitional period is not available for Unitary Patents.

C. Patent owners now have two important decisions to make

• All applicants for European patents must decide soon whether they want

  • an EP application automatically granted as EP patent, or

  • to file a request for unitary effect to obtain a Unitary Patent in the available states (green) and an EP patent in the other states (blue).

  If the patent owner decides for an EP patent, no action is needed. However, if the applicant decides for a Unitary Patent, a request for unitary effect needs to be filed.

  Please let us know for all your pending EP patent applications if you wish to file a Unitary Patent request.

• All applicants need to decide whether

  • the Unified Patent Court shall be automatically competent for all their already granted EP patents and all pending EP patent applications, or

  • whether to file an Opt out request so that the national courts remain competent for infringement and revocation separately for each state.

An infringement decision with unitary effect in all states can be a great win for the patent owner, while revocation decision with a unitary effect would mean the loss of the patent in all states at once. On the other side, in case of an Opt out, the national courts remain competent separately for each country. A positive infringement decision for a single state would not be so powerful, but on the other side a revocation decision in a single state would leave the patent unaffected in other countries. Patent owners may therefore choose the UPC only for very strong patents and consider filing an Opt out for all other patents. Even after an Opt out, patent owners can still choose to Opt back in later, however a second Opt out is impossible.

If the patent owner decides for the competence of the UPC, nothing needs to be done. If the patent owner prefers separate competence of the national courts, he will need to file an Opt out request with the UPC. An Opt out request should be filed as soon as possible when the so-called sunrise period begins shortly before the start of the Unified Patent Court. Once any proceeding before the Unified Patent Court have already started, an Opt-out is impossible. This also represents a powerful tool to force a competitor’s patent in the competence of the UPC which allows a revocation with unitary effect in all states.

Lee & Schwerbrock provides services for EPC patent application and related proceedings, please contact us for further details.