What are the changes?
The arrival of the unitary patent and the Unified Patent Court (UPC) represent the biggest changes in European patent law in a generation. Proprietors of European patents and pending European patent applications will need to make important decisions about how to handle these changes in view of their effects on granted and pending patent rights.
A unitary patent is a single patent which will have effect in several countries which are members of the EPC (European Patent Convention) and the EU (European Union).
The Unified Patent Court is a new international court for patent litigation.
When are the changes happening?
These changes have been in the pipeline for several years. German ratification on 17 February 2023 means that the new legislation will finally come into force on 1 June 2023.
A sunrise period for opting out from the jurisdiction of the UPC begins on 1 March 2023.
Do the changes affect pending applications and/or granted patents?
Both pending European applications and granted European patents (including those already validated) are affected by the law changes. This includes all live cases with a filing date as early as June 2003.
Supplementary protection certificates (SPCs) for pharmaceutical inventions are also affected by the law changes.
Which countries are affected?
Countries need to be one of the 39 EPC member states and an EU member state to participate.
Initially, it is expected that the changes will take effect in 17 eligible countries:
- Austria
- Belgium
- Bulgaria
- Denmark
- Estonia
- Finland
- France
- Germany
- Italy
- Latvia
- Lithuania
- Luxembourg
- Malta
- the Netherlands
- Portugal
- Slovenia
- Sweden
The following eligible countries might join later:[1]
- Cyprus
- Czech Republic
- Greece
- Hungary
- Ireland
- Romania
- Slovakia
Which countries are not affected?
The following EU countries are not UPC signatory states:
- Croatia
- Poland
- Spain
EPC countries which are non-EU countries are ineligible and therefore unaffected are:
- Albania
- Iceland
- Liechtenstein
- Macedonia
- Monaco
- Montenegro
- Norway
- San Marino
- Serbia
- Switzerland
- Turkey
- UK
How do the unitary patent and the Unified Patent Court affect my patent portfolio?
There are two separate issues for patent applicants and patentees to consider:
- The unitary patent: this is only relevant for patents which grant after the legislation comes into force
- The Unified Patent Court: this affects pending applications AND has a retrospective impact upon European patents which have already been granted
Want to know more?
Register for our webinar
Join Senior Associate, Dr. Serena White as she outlines throughout the webinar:
- What the law changes are and what they mean for Australian and New Zealand businesses and individuals with European patents and patent applications;
- The advantages and disadvantages;
- The benefits and risks; and
- What Australian and New Zealand businesses and individuals need to do to prepare.
Discover more about the unitary patent and UPC here.
We welcome queries from our Australian and New Zealand clients regarding the unitary patent and the UPC. We would be happy to discuss what these changes mean for you and assist you with managing your IP portfolio in view of the changes.
Disclaimer
This article is intended to provide general advice. Deciding if unitary patent protection is the right choice and whether or not to opt out a European patent or patent application from the UPC are commercial decisions which will depend on the specific circumstances.
[1] These countries have signed but not yet ratified the relevant legislation. Correct at time of writing (20 February 2023)