Europe nears ‘unitary patent’ system

In today’s global market, international patent protection can be crucial, and for many inventions Europe is an important region where patents are needed. According to the present system, considerable cost and effort can be saved by filing and prosecuting a single “European” patent application with the European Patent Office (EPO), to which most European countries belong, including the U.K. However, once an “intent to grant” is received from the EPO, inventors are required to select individual European countries in which to “validate” their patent, which can be a difficult decision.

All this is about to change. A process is currently underway in Europe that is expected to give rise to a new “unitary patent” system for European patents, which is expected to launch later this year.

The unitary patent system will consist of two cooperative but distinct parts, which are the unitary patent (UP) and the unitary patent court (UPC). The UP will be a single patent that applies to all of the participating countries, which are most of the countries in Europe. The UPC will be a single court that will issue decisions applicable to all of the participating countries.

General rules governing unitary patents are:

•  It will not be possible to convert existing European patents that were previously validated in individual European countries into unitary patents. However, if a European “decision to grant” is received before the UP system takes effect, it may be possible to suspend the process and wait until the UP system is launched, so that a unitary patent is eventually obtained. Of course, once the UP system is launched, applicants will have the option of choosing, after an intent to grant is received, to accept a unitary patent (UP) or to validate the patent in individual countries under the old rules (EP patent). Once the patent issues, it will not be possible to change from one system to the other.

• The “rule of thumb” is that the maintenance fees for a unitary patent may be similar or cheaper than the aggregate maintenance fees for six or more individual European countries, depending upon which European countries are of interest. If fewer than six countries are of interest, it may be less expensive to validate a European patent in individual countries, rather than accepting a unitary patent.

General rules governing the unitary patent court:

• By definition, a unitary patent will be subject to the decisions of the UPC. However, the owner of an EP patent issued under the “old” system will be able to choose whether the patent will be subject to the decisions of the UPC, or will continue to be subject to the national courts where it was validated. The default will be for an EP patent to be subject to UPC decisions once the UP/UPC is launched, even if the EP patent was issued many years ago. This is referred to as an EP patent being “opted in.” Similarly, the process of choosing that an EP patent will remain subject to individual, national courts is referred to as “opting out.”

• Opting out will be possible beginning three months before the launch of the UP/UPC system and will continue for at least seven years after the launch. It will also be possible during these time periods to withdraw an opt-out, i.e., to opt back into the UPC. However, if litigation is initiated, then changing an opt-in/opt-out decision will not be possible. At most, only one opt-out followed by one opt-in will be allowed.

• Deciding whether to opt out of the UPC is complex, and can depend on your commercial strategy, the “strength” and strategic importance of the patent, and the likelihood that it will need to be enforced in multiple European countries. Opting in could be described as a “higher risk/higher reward” strategy, in that success will mean automatic enforcement of the patent in all validated countries, while a loss in the UPC could invalidate the patent in all validated countries. In contrast, opting out may be a more conservative approach, whereby enforcement can be attempted in one European country without putting the validity of the patent into immediate jeopardy in the other European countries.

In preparing for the coming changes, difficult decisions may be required, and strategies may need to be reexamined. If so, then it will be highly important to seek the counsel of a licensed patent professional.

Dr. Douglas Burum is an intellectual property specialist and registered patent agent with Maine Cernota & Rardin, Nashua.