Introduction

The implementation of the Unitary Patent System (UPS) commenced on the 1st of June, 2023. Earlier, the European patent system posed challenges to the competitiveness of European businesses and businesses seeking patent protection in Europe. It was thus essential to offer patent applicants and owners an efficient means of obtaining and enforcing patent protection across Europe. Prior to the implementation of the Unitary Patent System, the fragmented European patent system was characterised by several significant disadvantages. These included the expensive process of obtaining patents in multiple European countries, the possibility of encountering legal problems and revocation proceedings in different national courts, varying interpretations of European patent law among these courts, and the financial burden of paying renewal fees in each desired European country. In response to these concerns, the European Commission implemented the Unitary Package in order to improve the patent environment. The Unitary Patent package comprises two European Union regulations that establish the legal structure for the Unitary Patent, along with an international agreement called the UPCA, which establishes the Unified Patent Court.

Need for a Unitary Patent

The Peace of Westphalia treaty divided Europe into many independent states based on territory and established that each state had control over its internal affairs. This autonomy with regards to patent laws, means that a patent given by one country is only valid and enforceable within that country's borders and according to its laws. Even though various efforts were made to unify the substantive patent laws in Europe, countries were hesitant to give up their power over post-grant patent issues to another country or a multinational organization. The political challenges preventing countries from sharing authority over patent matters needed to be overcome to make the patent system more appealing for innovation in Europe.

Earlier, there were two ways of getting patent protection in Europe. First is the national route which requires separate filing in individual states. This is preferred where protection is sought in a few countries. Second is the European Patent Convention route wherein the inventor or owner files one patent application in English, French, or German, the three official languages of the European Patent Office (EPO) , pays a single application fee and the application is examined by a single patent office. If the EPO grants the patents, the patent does not become enforceable automatically. The patent owner is then required to individually validate it in each EP state where the applicant requires protection. For this purpose, the majority of States require a full translation of the patent into the official language of the country. This means that the EPC unifies the filing of patents but not the enforceability of patents.

In case of violation of a European patent issued by the EPO and recognized in a European Union (EU) country, the rules that apply are those of the specific country. This leads to differences in how national courts handle patent cases, often resulting in conflicting decisions. So, if a patent owner wants to take legal action against an infringer, they have to go to the courts of each country where the infringement happened. Moreover, only national courts can handle cases related to revoking a patent and any counterclaims associated with patent revocation that are part of the infringement case. This process of suing in multiple countries is expensive, and it creates uncertainty for patent owners because different countries have different ways of dealing with patent cases. Competing markets of the UK, such as the US and Japan, have a unitary system covering their entire territory with a single language and court jurisdiction. A patent owner in Europe has to translate the patent into the official language of each country, hire patent agents for each country, pay publication fees to each national patent office, and deal with various formal filing requirements. Further, there is uncertainty about whether the patent can be enforced. Litigation often happens in multiple countries, raising costs and potentially leading to different decisions from national courts. Additionally, a patent granted by the EPO can be challenged within nine months, and if successful, the patent can't be enforced in any Member State. However, if the EPO upholds the patent's validity, it does not prevent a challenge in a subsequent patent infringement case in any Member State. Furthermore, decisions about patent validity by one national court are only binding in that nation. A 2009 study performed for the European Commission revealed that the cost of obtaining a European patent, validating the patent in all EPC countries, and paying renewal fees to the national offices is fifteen times greater than the cost of obtaining a patent enforceable throughout the United States. Thus the expensive and complex requirements of the EU made patent protection in the EU less attractive. Thus, there was a need for a unified patent regime in Europe.

What is a Unitary Patent?

A Unitary Patent is a special type of European patent that, once granted, provides uniform protection and has an equal legal effect across multiple European countries. It is like a single patent that covers several countries at once. The unitary patent builds on the European Patent System (EPS), which means that in order to file a unitary patent, the procedure is the same as filing a European Patent, i.e., the pre-grant procedure is the same. The difference lies in the post-grant procedure. Once the EPO has granted the patent, the applicant has to request for effecting the unitary patent within one month of the grant. The EPO handles administrative tasks related to Unitary Patents, which it has been entrusted with by the member states.

This Unitary Patent process is more straightforward and cost-effective than the traditional way of validating patents separately in each country. The EPO registers the Unitary Patent if the requirements are met, ensuring consistent protection and legal status across all participating countries. The Unitary Patent can be limited, transferred, revoked, or licensed, but these actions apply uniformly to all the participating countries covered by the patent. It needs to be kept in mind that the unitary effect can only be registered for the patent if it was granted with the same set of claims in all 26 participating states. If this is not the case, the EPO must reject the request for unitary effect. A unitary patent covers the territories of those participating member states where the UCPCA has taken effect on the date of registration of unitary effect. Under EPC, it is permissible to employ any of the three officially recognised languages of the EPO for written procedures. However, for unitary effect the petition has to be in the language used for the proceedings. To ensure the correct language is used, it is advisable to utilise the online filing options or the trilingual EPO Form 7000 when requesting unitary effect. The request for unitary effect must also contain a translation of the European patent. If the proceedings are in French or German, a full translation into English is required. If the language of the proceeding is English, a translation into any other official language of the EU needs to be submitted. This does away with complex translation requirements. Further, Unitary Patent Court (UPC) has also been established to ensure uniform protection. It is a common court among contracting states, focusing on Unitary Patents and classic European patents. It aims to reduce litigation costs, risks, and complexities by establishing harmonised case law and increasing legal certainty.

Process of Unitary Patent Grant

1. After getting a grant from the EPO, the applicant has to file a request for unitary effect within 1 month of the publication of the mention of the grant of the European patent in the European Patent Bulletin according to Rule 6(2) UPS.

2. The applicant has to ensure that the same set of claims are filed in respect of all participating members according to Rule 5(2) UPS and that the formal requirements are met under Rule 6(1) UPS. If these requirements are met, the patent will be registered in the register for Unitary Patent Protection.

3. If the request for unitary effect is not filed within 1 month, then there is a provision for filing a re-request within 2 months of expiry of the 1-month period of Rule 6(1), after which the same procedure is to be followed.

4. If the requirements under 5(2) are not met, then there will be an invitation to comment under Article 113(1) EPC. As a result of this, if the requirements of 5(2) are met, requirements of Rule 6(2) need to be seen after which the patent can get unitary effect. If they are not fulfilled, there will be a rejection for unitary effect.

5. If the requirements under 6(2) are not met, then the deficiencies can be remedied within a non-extendable period of 1 month. If the deficiencies are remedied then the patent will be registered in the register for Unitary Patent Protection. If they are not remedied then there will be a rejection of request for unitary effect. Against this an appeal can be raised at the Unified Patent Code.

Advantages of Unitary Patents

1. It provides uniform protection across all participating countries on a one-stop-basis

2. It provides substantial cost advantages and reduces administrative burdens.

3. It ends complex validation requirements and drastically limits expensive translation costs in participating countries.

4. It cuts down time and gives greater certainty.

5. The licensee need not be worried about where and in which of the designated countries the patent can be practiced because, under UPS, it gets protection in all member states.

6. It protects the invention better. Under the EPC alone, due to the cost involved in national validation and maintenance, many inventors only patent their inventions in a few of countries. Thus, there is a lack of protection, which could make the invention less valuable.

7. The renewal fee is very attractive under UPS. Unitary Patent proprietors pay one single renewal fee to the EPO, in one currency (i.e. in euros) and under a single legal regime regarding deadlines and admissible means of payment. This greatly simplifies matters for users.

8. It also allows for an opt-out option.

Disadvantages of Unitary Patents

1. Not all of the EU member states have adopted the Unitary Patent System. Some countries, like Spain and Croatia, have chosen not to participate. After announcements of Brexit, UK is also not participating in the EPC. This means that the unitary effect of the patent would not cover these non-participating countries, and patent holders may still need to validate their patents individually in those territories.

2. A Unitary Patent can only be limited, transferred, revoked, or licensed as a whole for all participating member states. This means that if a patent is revoked in one country, it will lead to its’ revocation in all all the countries where it enjoys unitary effect. This lack of flexibility is a disadvantage for patent holders who prefer to make changes or modifications that apply only to specific countries.

3. Patent holders have the option to "opt out" of the Unitary Patent system for specific European countries and traditionally validate their patents. However, the process of opting out can be complex and requires careful consideration.

4. As with any new system, there may be initial challenges and delays in implementing and adjusting to the Unitary Patent system. This could affect the efficiency and speed of obtaining and enforcing patents in Europe

Author : Sukeerti Samalei Mishra, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References:

1. https://single-market-economy.ec.europa.eu/industry/strategy/intellectual-property/patent-protection-eu/unitary-patent-system_en

2. https://e-courses.epo.org/wbts_int/litigation/UnitaryPatent.pdf

3. https://link.springer.com/article/10.1007/s10657-016-9529-0

4. Reset and Go: The Unitary Patent System Post-Brexit

5. The Unitary Patent Package: Twelve Reasons for Concern

6. Mahne, K. P. (2012). unitary patent and unified patent court for the European union: an analysis of Europe’s long-standing attempt to create supranational patent system. Journal of the Patent and Trademark Office Society, 94(2), 162-191.