Currently, when a European patent application is granted, it essentially becomes a “bundle” of individual national patents; one in each state in which the patentee chooses to have it validated. Each national patent derived from the European application gives its proprietor the same rights as would be conferred by a national patent filed directly at that Patent Office. Litigation takes place on a national basis. Different outcomes in relation to validity and infringement are possible in each jurisdiction.
However, from 1 June 2023, it will be possible to obtain a single European patent with unitary effect (a so-called “unitary patent”), covering multiple countries. Patent applications will still be examined by the European Patent Office (EPO) in accordance with the European Patent Convention (EPC) and opposition after grant will continue to be available in the same way as it is now; however, it will be possible to request unitary effect for patents which are granted after the relevant legislation comes into force (provided that the filing date is on or after 1 March 2007 i.e. the date Malta joined the EPC).
What countries will be covered by a unitary patent?
Several European Union (EU) countries will be covered by a unitary patent but not all EPC member states will be covered. For example, a unitary patent will cover France and Germany but not the UK, Switzerland or Spain.
If unitary effect is requested, the countries covered by the resultant unitary patent will be those where ratification of the legislation has taken effect at the date of registration.
If unitary effect subsequently becomes available in additional countries after the date of registration, the unitary protection will not extend to the additional countries for that patent. Find the full list of countries covered by a unitary patent in our article here.
What about litigation of unitary patents?
Litigation of a unitary patent will take place at the Unified Patent Court. A unitary patent is a single right which will stand or fall in all countries covered by the patent.
Find out more about the UPC here.
How is unitary effect requested?
Unitary effect must be requested within 1 month of patent grant.
How much does it cost to request unitary effect?
There is no official fee for requesting unitary effect.
What about translation requirements?
During a transitional period (at least 6 years), if the patent is in English, the patentee must provide a translation into another official EU language. Alternatively, if the patent is in French or German, the patentee must provide a translation into English.
After expiry of the transitional period, there will be no translation requirement for unitary patents except in the event of a dispute.
What about renewal fees?
A single annual renewal fee will be payable for a unitary patent.
Can I request unitary effect and obtain national patents by validation?
If unitary patent protection is requested, it will not be possible to also obtain national patents by validation in the same countries.
What about countries where unitary patent protection is not available?
The traditional validation route will still be available in EPC member states which are not covered by a unitary patent.
What if unitary effect is not requested?
If unitary patent protection is not requested, national patents can still be obtained by the traditional validation route.
Is it possible for a unitary patent to have different claim scope in different countries?
No. A unitary patent, by its very nature, must have the same scope in all countries.
Is it possible to have different owners in different countries covered by a unitary patent?
No. A unitary patent must have the same owner in all countries it covers.
Is it possible to have different licensees in different countries covered by a unitary patent?
Yes. A unitary patent can be licensed in respect of the whole or part of the territories covered by the patent.
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.
Find out more about which countries are affected here.
Find out more about the UPC here.
Find out more about consequences for EP applications 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.