[UPDATE DECEMBER 5, 2022:] An announcement has appeared on the website of the UPC stating that the planned date for the entry into force of the UPCA is delayed with two months until June 1, 2023, because of IT problems.
As it stands, we might have a new type of European patent soon (2023) in addition to the existing European ‘bundle’ of national patent rights; the ‘Unitary patent’. The Unitary patent is a European patent that, after grant, is valid is a large part of the EU. You can choose between the ‘bundle’, the Unitary patent or a combination thereof.
The entry into force of the related agreement also has consequences for existing European patents. It is important that you are aware of the available choices and consequences of the new legislation for your new and existing European patent rights.
We hereby provide you with an overview of the available choices and consequences.
The difference between the Unitary patent and the existing ‘bundle’
According to current regulations, a European patent can be validated per member state, after grant, for a selection of member states of the European Patent Convention. In this way, a European ‘bundle’ of national patent rights is created. The ‘bundle’ is not limited to member states of the European Union. The European patent may for example be validated in the United Kingdom and Switzerland, but also in Turkey or Morocco.
In the near future, it will also be possible to validate the European patent after grant with unitary effect, i.e. as a Unitary patent. After grant, the Unitary patent is valid in all EU member states that are participating in the ‘Unified Patent Court Agreement’ (UPCA). The Unitary patent thus provides an alternative to validating the European patent in the same EU member states individually as part of the aforementioned European ‘bundle’ of national patent rights. The Unitary patent provides patent protection in a large part of the EU against fewer costs.
The substantive examination procedure of the European patent application remains unchanged. It is only after grant that you may choose for the Unitary patent, one or more countries from the current ‘bundle’ or a combination thereof.
Disputes regarding the validity of and infringement on the Unitary patent will be delt with by a central court, the ‘Unified Patent Court’ (UPC), instead of nationally per member state as is the case with the current European ‘bundle’ of national patent rights. This should lead to more uniform case law.
The Unitary patent however also has some drawbacks. For example, the Unitary patent is not valid in countries which are not within the European Union, such as the United Kingdom, Norway and Switzerland. Moreover, not all of the countries of the European Union have (yet) participated in the Unitary patent. In contrast, these countries are part of the European ‘bundle’ of national patent rights. Therefore, there is a large discrepancy between the country coverage of the Unitary patent and countries that can be chosen with the ‘bundle’.
In addition, the Unitary patent is not flexible when you want to reduce the country coverage in the future, for example because of the costs, and the Unitary patent may be invalidated in one go by the central court, whereas the European ‘bundle’ of national patent rights, at this moment, still have to be invalidated per country.
Timeline and key moments
Because Austria was the 13th member state to ratify the UPCA on January 18, 2022, a ‘Provisional Application Period’ (PAP) has started on January 19, 2022, to prepare for the Unitary Patent. This period will last for at least 8 months and in any case until Germany deposits its instrument of ratification, after which the start date for the central court can be determined. [Update December 5, 2022:] The planned start date for the central court has now been delayed until June 1, 2023.
3 months before the start date (to be determined), a so-called ‘Sunrise’ period will commence. In this period, you as holder of one or more European patent applications and/or European patents needs to take a number of important decisions to ensure that your interests are secured in the best way possible in the new situation.
The timeline is as follows:
The ‘Sunrise’ period will commence [Update December 5, 2022:] at the earliest on March 1, 2023. From that moment, the following decisions can be made:
- What to do with pending European patent applications; and
- OPT-IN / OPT-OUT for existing European patents.
However, it is already possible to delay the prosecution of pending European patent applications, even now, in anticipation of the ‘Sunrise' period.
For the considerations that go with these decisions please consult our detailed brochure about the Unitary patent.