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“New possibilities to secure and litigate Patents in Europe: The new Unitary Patent and the new Unified Patent Court”
07/05/2024
Patents protect technical inventions. Similar to other intellectual property rights like trademarks or designs, they thus provide an exception to the principle of freedom of imitation. Legislators around the world have recognized that technical progress is only possible if inventors get a reward for their inventions in the form of exclusivity for a limited period of time.
Generally, patents are granted for inventions that are new and are based on inventive steps. It is very important to note that an invention must not be published prior to filing a patent application. So, it is of utmost importance to file a patent application before any publication. For details, see the author’s article in Indo-German Economy of March 2022, pages 53 to 55.
After establishing the first patent systems during the Industrial Revolution of the 19th century, it was soon recognized that patent protection on the sole basis of independent national legislation is not suitable, because this would require an inventor to apply for patent protection in a plurality of countries before he can make any publication of his invention and can see if the market potential for the new product is worth the patenting effort. Thus, the Paris Convention of 1883 introduced the possibility of recognizing priority rights between participating countries for a period of one year after the first filing. Since then, it has been possible to file one single national application in order to secure rights and to make use of this right for one year in any other participating country when filing a patent application. However, it was recognized that one year is too little time in most cases to determine where patent protection is suitable. For this reason, the Patent Cooperation Treaty was signed in 1970, providing a possibility to streamline the patent application process by just filing one application for all participating countries and by giving up to 30 months from the first priority date to decide in which countries a patent examination should be initiated.
In Europe, there was an additional, very important step of harmonization with the signature of the European Patent Convention in 1977, establishing the European Patent Office as an independent organization for granting patents. Today, the European Patent Convention has 38 member countries, including all EU member countries but also non-EU countries like the United Kingdom, Switzerland, Turkey, Norway, and Iceland. Patent protection in countries on the Balkan and even in North Africa and Asia can be obtained through validation and extension agreements.
While providing a very efficient means to obtain patent protection in Europe, up to 2023 the European Patent System was only responsible for the grant process. As soon as a patent was granted and has possibly survived an opposition proceeding at the European Patent Office, maintenance and enforcement were the sole responsibility of participating countries. This means that maintenance fees had to be paid in each country for which patent protection should be maintained similar to a national patent, leading to high costs for widespread patent protection with the consequence that most patents are only maintained in a selected subset of countries. Furthermore, it means that patent infringement had to be litigated in all countries separately, which was also very costly and could even lead to diverging decisions regarding infringement.
New legislation of 2023
Efforts to further harmonize patent law in the EU started decades ago but were always blocked by some countries that were not willing to participate. In 2023, new opportunities to save costs and streamline litigation were finally put into force by using the mechanism of Enhanced Cooperation, offering the possibility to introduce EU legislation for only a subset of EU member countries. The participating countries are Germany, France, the Benelux countries, Austria, Portugal, Denmark, Sweden, Finland, the Baltic countries, Italy, Slovenia, and Bulgaria. For these countries, the possibility to get Unitary Patent Protection and to litigate using the Unified Patent Court, both of which will be described further below, are now valid. Furthermore, Ireland, the Czech Republic, Slovakia, Hungary, Romania, Greece, and Cyprus have signed the relevant agreement, but have not yet finally performed all necessary ratification steps.
Unitary Patent Protection
One of the two new possibilities introduced in 2023 is the Unitary Patent Protection, being valid in all participating countries. This is possible for almost all newly granted European Patents and means that the patent will be maintained in all these countries similarly as if it would be maintained in just one country. There is only one maintenance fee to be paid on a yearly basis. In general, it can be said that the Unitary Patent Protection is in most cases cheaper if the patent should be maintained in more than four usually selected countries. However, there will be no possibility to let the patent lapse in one of these countries separately. Should there be a challenge to the validity of the patent, the patent will be maintained, restricted, or revoked with identical effects for all participating countries.
It should be consulted individually with a competent patent attorney if Unitary Patent Protection is suitable after grant, or if the patent should be validated and maintained according to the classical scheme on a national basis.
Unified Patent Court
The Unified Patent Court (UPC) is a highly specialized court having jurisdiction over patent matters for all participating countries. The idea is that a patent proprietor can litigate patent infringement using the UPC with only one proceeding and that the decision is valid for all participating countries. Likewise, a nullity proceeding may be initiated against a patent with validity for all participating countries.
The UPC has exclusive jurisdictions for all Unitary Patents (see section 3). This means that if the patent proprietor has decided to use the newly introduced Unitary Patent Protection, usage of the UPC for both litigation of infringement and nullity proceedings is mandatory for the participating countries. For other countries (like Switzerland or the United Kingdom), national courts remain competent.
However, the UPC is also competent for all other granted European Patents, even if they were granted before establishing the UPC, as long as the patent proprietor has not declared an opt-out. In case of a declared opt-out, national courts remain competent even for the participating countries.
The UPC has significant advantages over national courts for patent litigation. The court fees are considerably lower compared to German national court fees, especially if it comes to high amounts in dispute. Jurys may be formed including technical judges, increasing the technical competence of the court and reducing the requirements for separate expert opinions. European Patent Attorneys may represent alone before the UPC, omitting the need to have two attorneys for each party. The rules of procedure of the UPC are drafted to ensure that typically a decision in the first instance is available after one year, giving legal certainty in a short time frame.
Of course, the usage of the UPC requires confidence in the new court system. However, many competent judges with a high level of experience in the national court systems of the participating countries now also work as judges for the UPC, so it is to be expected that the UPC can provide a high quality of work from its beginning. Most large European companies do not opt out of their patents and trust in the new system.
An opt-out may especially be considered for patents with a very high specific value, for example, patents protecting a blockbuster drug in the pharmaceutical industry, because after opt-out of a patent being valid in many countries the burden to successfully attack the patent is significantly increased, as a plurality of national proceedings are necessary. It should be consulted with a competent patent attorney in each case if an opt-out makes sense or not.
Conclusion
The new European Unified Patent System offers new possibilities to save costs and streamline patent litigation for a significant part of European Union member countries. This especially provides advantages for small and medium-sized companies, who can maintain and enforce their patents with reduced costs and effort.
Author:
To schedule an individual preliminary consulting, please contact the author:
Patent Attorney Dr. Martin Schlosser
Tel.: +49 821 543 888 90 / mail(at)schlosspat.de
Dr. Martin Schlosser is a German and European Patent Attorney, European Patent Litigator, European Trademark and Design Attorney, and Business Mediator located in southern Germany. He advises and represents SMEs, large corporations, and research institutions regarding European and international intellectual property rights.
