As we have previously discussed, the examination of a patent seems to progress at a glacial place, and unsurprisingly, reform to the patenting process is equally gradual. It is therefore surprising to see that the advance towards the Unitary Patent – the “European patent with unitary effect” as per the EPO website – has been making steady progress.
As of 14 May 2014, the Intellectual Property Act 2014 has received Royal Assent, completing one of the important formal hurdles of the Unified Patent Court agreement, which outlines the provisions for the creation of the Unified Patent Court.
Council Agreement on a Unified Patent Court (UPC)
EU Regulation 1257/2012 was implemented on 17 December 2012, and authorised the creation of Unitary patent protection within the European Union. “A European patent granted by the EPO should, at the request of the patent proprietor, benefit from unitary effect by virtue of this Regulation in the participating Member States”. The participating Member States in this instance are all EU states, with the exception of Croatia, Italy and Spain. However, this Regulation remains toothless without a Unified Patent Court having jurisdiction over such Unitary patents.
The UPC agreement therefore aims to solve this issue, by creating the Unified Patent Court. Signed by 25 Member States (EU states, with the exception of Croatia, Poland and Spain) on 19 February 2013, the Court will primarily sit in Paris, with satellite Courts in London (primarily for pharmaceutical and life sciences patents) and Munich (primarily for mechanical patents), and a Court of Appeal based in Luxembourg. The agreement for the establishment of the UPC is therefore in place; however, the agreement requires ratification in 13 Member States before the Court can be established.
Being the three states of the EU from which a majority of patents are filed in Europe, Germany, France and the UK must be amongst these ratifying states. Therefore, the ratification of the UPC is in part being enabled by the 2014 IP Act substantially overcomes one of the major formal barriers to the establishment of the Court. At the time of writing, only Austria and France have formally ratified the UPC agreement, with the UK and Malta now being in a position to formally ratify the agreement at any point. This would therefore leave only Germany and eight other states to ratify the agreement, and three months thereafter, the Unitary patent system will take effect.
Unitary Patents
So, what does this mean for patents in Europe? The UPC is likely to be established at some point during the next few years, and proprietors of granted patents will be able to ‘apply’ for Unitary Effect. In practice, this will likely mean that you will actually be required to ‘opt out’ of Unitary Effect, rather than ‘opting in’. It is important therefore to note that the current provisions of the European Patent Convention are not going anywhere; European patents will still be able to be validated in individual Member States if desired, and for a transitional period of at least seven years, infringement and validity actions may still be raised in national courts as opposed to the UPC.
However, the Unitary patent will streamline matters post-acceptance of the patent application. Notably, the EPO is working towards a fully automated machine translation system, wherein, provided the language of proceedings of the patent application was in English, French or German, there will be no translation requirements for granted patents. This will likely significantly reduce costs for applicants wanting to extend their protection into multiple European states which presently require translations.
Furthermore, the renewal fees for the Unitary patent will be handled centrally at the EPO, rather than with national offices. Said fees are not presently set, so it remains to be seen whether it will be more cost-effective to apply for a Unitary patent when protection is only desired in a few Member States; at the very least, administrative costs associated with a Unitary patent should be reduced when compared to individually validated European patents.
Beneficially, the introduction of the UPC means that infringement or validity actions can be resolved centrally post-grant, whereas, at present, such actions need to be brought for each validated state. This will remove the ambiguity associated with a patent being invalidated in one state, yet still in-force in another.
Overall, will the Unitary patent represent a simplification of the European patenting system post-grant, reducing costs for applicants across the continent? That is the goal, but there are likely to be numerous legal headaches which arise, not least because of the existence of the transitional period, where some patents will have Unitary effect with others remaining independently valid in Member States.
Whether a Unitary patent will make commercial sense should you be interested in protection in only a limited number of states remains to be seen. At this time, the provisions are more of academic interest, rather than practical benefit. What should not be forgotten, however, is that existing European applications and patents can be made to have unitary effect when the provisions come into force. Watch this space for more information regarding the Unitary patent.
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