On January 19, 2022, the provisional phase of the Protocol of the Agreement on the Unified Patent Courtbegan.
With this milestone, a transition period begins before the entry into force of the agreement establishing the Unified Patent Court and the Unitary Patent. Entry into force is expected to take place in late 2022, early 2023.
The countries covered by this Agreement in respect to the Unified Patent Court all those of the European Union with the exception of Spain, Croatia and Poland.
However, as far as the Unitary Patent is concerned, all the countries of the European Union, except Spain and Croatia:
Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia and Sweden
Unified Patent Court
This Court, under the umbrella of the European Union, will be able to process lawsuits related to the rights granted by patents in a unified manner. It will have competence in lawsuits for patent infringement and nullity proceedings of the same.
The Unified Patent Court will be made up of experts in Industrial Property, which will give the parties involved in patent litigation greater legal certainty.
Thanks to this Court, it will be easier and cheaper to enforce patent rights in Europe.
The Unitary Patent
Current situation: The European Patent application
Today, the European Patent Convention (EPC) allows unifying the process of application, search, examination and granting of a patent for 38 countries in the European geographical area and thanks to agreements with third countries, even beyond.
However, once the European Patent has been granted, it must be “validated” in each of the States where definitive protection is desired. This creates a “bundle of national patents” originating from a single European patent. The patents thus originated are subject from that moment to the national legislation of each country.
The validation process is usually expensive, since many Industrial Property Offices request a translation of the granted patent into their official language. In addition, the maintenance of national patents has a high cost, as each one of the Industrial Property Offices requests the payment of their maintenance fees.
The imminent Unitary Patent
The unitary patent comes to offer an alternative tool to the validation process of current European patent applications.
The unitary patent will allow the holder of a granted European patent to maintain protection in a unified way for the 25 countries mentioned above through a single patent.
It is up to the holder to decide whether to apply for unified protection through the unitary patent or to validate his European patent individually in each of the countries of his choice.
The request for unified protection through a Unitary Patent will have the two main advantages:
Cost reduction
- It will not be subject to the payment of official fees.
- It will not be necessary to provide translations of the text granted by the European Patent Office.
- A single maintenance fee will be paid for all States.
Simplified management
- All procedures, from the request to the maintenance, will be managed centrally by the European Patent Office.
For the rest of the 38 Member States of the European Patent Convention (plus the validation and extension States) the process to obtain definitive protection once the European patent is granted remains as it is to date.
Preparations for the unitary patent
With a view to the entry into force of the unitary patent, and in order for applicants for European patents that are currently pending to benefit from its advantages, two transitory measures have been established.
These measures will enter into force once Germany ratifies the Agreement on the Unified Patent Court. Their application will end with the entry into force of the Agreement. It is expected to enter into force in 4 months from its ratification by Germany. Applicants of European patents for which a definitive text has already been proposed for granting in accordance with Regal 71.3 of the European Patent Convention will be elegible for these measures.
Early request for the Unitary Patent
It will be available for applications where, once the grant proposal has been issued, it is expected that the publication of the grant will take place after the entry into force of the Agreement.
The applicant may submit the petition to obtain a unitary patent before the publication of the mention of grant of the European patent. In this way, it will be possible to obtain the unitary patent as soon as the Agreement enters into force.
Once these transitory measures are ended, the request for the unitary patent must be made within a period of 1 month from the publication of the mention of the grant.
Delay in the grant of the European patent
It will be available for applications where, once the grant proposal was issued, the procedures to approve the proposed text have not yet been completed. It must be submitted in cases where it is expected that the publication of the grant may take place before the entry into force of the Agreement and the applicant wants to be able to opt for the unitary patent.
The applicant may request the publication of the mention of grant to be delayed, so that it takes place once the Agreement enters into force. In this way, it will have the possibility to opt for the unitary patent protection of the European patent.
Once the Agreement is in force, all applicants for European patents that are granted will have the option of applying for the corresponding unitary patents.
