This is IPcopy’s original Q&A post on the unitary patent package (published 20 December 2012). A more recent and updated version of this post, which was published on 10 April 2013, can be found here.

 

After last week’s vote in the European parliament (Note: this article was published 20 December 2012), it seems that the unitary European patent really is here to stay. Many of the finer details are yet to be sorted out, and there is plenty of speculation in the patent world right now as to how things will pan out over the next few years. But there’s also plenty that we now know for sure about how the unitary patent will work, and how it might begin to affect your IP decisions, so here on IPCopy are the answers to your burning questions (grab a hot beverage of your choice and get comfy – it’s a long one…!):

Q) What did I hear recently about a unitary patent for Europe? Don’t we already have a single European patent?

A) Currently, under the European Patent Convention (EPC) an Applicant can file a European patent application with the European Patent Office (EPO). This single European application is prosecuted, and hopefully granted, by the EPO, and retains the Applicant’s right to protection in any of the EPC-contracting countries. Once granted, the European patent is validated in your choice of EPC-contracting countries, where it essentially becomes a bundle of national patents. An applicant might typically choose between 3 and 10 countries for validation. Each national patent stands and falls independently of the others, and each must be litigated separately in the relevant national court.

Recently, the European Parliament has approved the formation of ‘A European Patent with Unitary Effect’ (often referred to as a unitary patent or an EU patent), and a Unified European Patent Court to over see its enforcement. An Applicant can file a European patent application in the same way as before, and up to grant the process will remain the same. After grant, an Applicant will be able to choose between two options: either validation of the patent in separate countries in the same way as before, or the new unitary patent.

The unitary patent will have effect in twenty-five* ‘member countries’. After grant a single renewal fee will be payable to cover all twenty five countries, and the unitary patent will be revoked, maintained, assigned or amended centrally, with effect in all twenty five countries. Whichever option the Applicant selects, litigation will be in the unified patent court.

(*or at least it will potentially have effect in 25 countries. During the ratification phase the unitary patent system can move ahead with just 13 countries, but we’re getting ahead of ourselves!)

Q) When will this come into force?

A) Assuming that the legislation has been ratified by at least 13 of the 25 member countries, the legislation will come into force on 1 Jan 2014. If ratification takes longer, this date may change.

Q) So, does that now mean I can just have a single patent to cover all of Europe?

A) Nearly, but not quite! To be a member country of the unitary patent that country must be a member of the EU, and not all of the EPC-contracting countries are EU members. Of those that are, twenty five have signed up to the unitary patent scheme, and, once they ratify the legislation, those twenty five countries will be covered by a unitary patent. Spain and Italy have opted out for now, but could join the scheme in due course. Non-EU countries cannot sign up (unless, of course they join the EU). The table below summarises who’s in, who’s out, and who might be in one day:

Q) I don’t need protection in all twenty five of those countries – can I still only choose to have an ‘old-style’ European patent and validate it in only a few countries?

A) In short, yes. Once a European patent has been granted you can choose whether or not you would like a unitary patent. As an alternative to the unitary patent, you can choose to validate your European patent in only your chosen countries (for example, validating only a few countries, such as France, the UK and Germany).

However, if you select the validation route, the patent will not be exactly equivalent to the bundle of national rights that you would get under the current system: the main difference will be that under the new system litigation, in respect of the member countries, will be at the unified patent courts, rather than the national courts.

Q) What do I do if I want a unitary patent, but I also want protection in a non-member country like Italy or Switzerland?

A) In this case, you must request a unitary patent, and you must also validate the patent in the countries that are not covered by the unitary patent. For example, you might request a unitary patent, and also validate the European patent in Italy and Switzerland.

Q) Can I opt out of this whole EU patent thing but still get patents in European countries?

A) If you want to avoid using the unified patent court altogether, you can file national applications in the individual European countries of your choice.

Q) Would national patents be a better option?

There are advantages and disadvantages to this option.

Depending on the countries that you select, national filings may be more costly. A European application can be filed in English, and no translations are required until grant. When filing separate national applications, translations of the application into the official languages of the relevant countries will be required on, or shortly after, filing, so the initial filing costs will be higher. You will also need to prosecute each national application separately, which will involve more effort and will most likely increase prosecution costs.

The eventual granted patents could well be of differing scope in each country. This could be advantageous; some countries have a lower threshold for inventive step, and so may allow broader protection than would be permitted by the EPO.

The main advantage will be that each national patent will stand and fall independently of the others. This means that if the patent is revoked or amended in one country, patents in the remaining countries will be unaffected. It also means that you can choose to allow a patent in a less significant country to lapse, for example to reduce renewal fees later in a patent’s life, whilst maintaining patents in the more important countries.

Something to watch out for: not all European countries permit national-phase entry of a PCT application.

Q) Wait, so that’s three different options for patent protection in Europe?

A) That’s right – you can choose amongst 1) separate national phase filings, 2) a new ‘European patent with unitary effect’, and 3) a European patent validated in your choice of countries. You might also choose a combination of these three options.

Here are the key differences in a handy tabulated form¹:

¹Note that the above table assumes the position after the transitional provisions have expired

Q) When will I need to decide which option to take?

A: If you would like to pursue separate national applications you should begin talking to your patent attorney about your filing strategy before the end of your twelve-month priority period. In some European countries (France, for example) a national application must be filed within the twelve month priority period. Other countries will allow national-phase entry from a PCT application at 30 or 31 months from priority.

If you would like to obtain either a validated European patent, or a unitary patent, you will need to file a European patent application: either within the twelve month priority period, or via a PCT application within 31 months of the priority date.

If you would like a unitary patent, you must request it within one month of grant of the European patent. If you would like to validate the patent in any European countries (this could be instead of, or in addition to the unitary patent), this must be done within three months of grant of the European patent.

Costs

Q) How much will it cost?

A: The cost of filing and prosecuting a European patent to grant will remain broadly the same as they currently are. The cost of requesting and ‘validating’ a unitary patent is currently unknown, as are the renewal costs. An additional cost to factor in will be the cost of translations, which is covered in the section below.

Q) I saw an article that a unitary patent would cost 980 Euro. Is this true?

A: Sadly, no. There was a press release from the EU Parliament that misquoted the figure for obtaining a unitary patent as 980 Euro (now corrected!). The costs will in fact be significantly more, and will include attorney costs on top of any official fees.

Translations

Q) What language will the application need to be filed in?

A) As in the current system, the application can initially be filed in any language, but if it is not in English, French or German it must be followed by a translation into one of those languages shortly after filing.

For small and medium-sized enterprises (SMEs) that have their residence or principal place of business in a country having an official language other than English, French or German, reasonable translation expenses will be reimbursed.

Q) I’ve heard something about the EPO using machine translations for the unitary patent – can that be right?

A) It appears that the EPO intends to develop tools for providing “high-quality machine translations”, with a view to publishing machine translations of the texts of patent applications into every official language of the EU. The intention is that these will serve for information purposes only, and will not have legal effect. IPCopy awaits these “high-quality machine translations” with interest.

Q) So what will happen while these tools are being developed?

A) Until these “high-quality machine translations” are available if the application is filed in French or German the Applicant must supply a translation into English, and if the application is filed in English the Applicant must supply a translation into an official language of an EU member state.

The English translation will be published by the EPO, so that it will be publicly available. After the “high-quality machine translations” have become available and this requirement has been lifted, the Applicant may still choose to supply an English translation voluntary, which the EPO will publish.

Q) Will any further translations be required?

A) No further translations will be required for the unitary patent during prosecution or grant.

However, further translations will be required if you select the national validation route. For example, if you choose to validate in Italy, a full translation into Italian will be required.

Post-grant: Renewals

Q) How and when will I pay renewal fees for a granted unified patent?

A: A single yearly renewal fee will be paid at the EPO for a unitary patent. The cost has not yet been decided, but the rumours are that the renewal fee might be equivalent to around 3 or 4 countries under a current European Patent, so it could be upwards of 1000 EURO per year.

Q) That’s a lot – any way to get a discount?

A: There are indications that a reduced renewal fee will apply to small and medium-sized enterprises (SMEs). A reduced fee will also be available if a licence is available as of right.

Q) Can I allow a unitary patent to lapse in some countries and maintain it in others to reduce the renewal costs?

A) No. A unitary patent will only be able to lapse in all of the participating states at once.

Post-grant: Litigation/Opposition

Q) What’s the unified patent court?

A) The unified patent court will be set up to enforce both unitary patents and European patents validated in those EPC countries that are part of the unitary patent system.

The unified patent court will include a Court of First Instance split between Paris, London and Munich, and a Court of Appeal located in Luxemburg.

The Court of First Instance will include a central division, and local and regional divisions.

The central division will be split between a seat in Paris and divisions in London and Munich. The London section shall deal with cases on the matters of ‘Human necessities’ and ‘Chemistry and metallurgy’, the Munich division will deal with cases relating to ‘Mechanical engineering, lighting, heating, weapons, blasting’, and the Paris seat will deal with remaining cases.

There will be up to four local divisions in countries having more than 100 cases a year, and regional divisions to cover groups of countries that, individually, would have fewer than 100 cases a year.

Q) So where will I need to bring an action?

A) If a patentee wishes to bring an infringement action in respect of a European patent or a unitary patent, the action must be brought at the local division (or regional division if there is no local division) in either i) the country in which the alleged infringement has occurred or ii) the country in which the defendant is domiciled or established. If there is no local or regional division, the action must be brought at the central division. The parties can also agree between themselves where an action should be brought.

Q) Will infringement and validity be heard in the same court?

A) It depends – if a defendant counter-claims for invalidity, the local or regional division hearing the infringement action may choose to keep both the infringement and validity proceedings in the local division, they may refer only the invalidity proceedings to the central division and either stay or continue with the infringement proceedings, or they may refer both the infringement and validity proceedings to the central division. The upshot of this is that the infringement and invalidity proceedings could play out in different divisions.

Q) Will people be able to file oppositions against an EU patent?

A) Yes, the procedures for prosecution, grant and post grant opposition are the same for a unitary patent as they would be for a European Patent.

Existing patents and applications:

Q) How will this affect my existing granted European patents?

A) From 1 January 2014, for member countries of the unitary patent system, the unified patent court will be able to deal with litigation in relation to any European patent, including those already granted. However, if you have a European patent that has already granted, you will be able to choose whether to litigate in the unified court or in the national courts during a transitional period (initially set at 7 years, but potentially extendible by a further 7).

Up to one month before the transitional period is over you can choose, for each patent that you have, to opt out of the unified court system for the remainder of the patent term. If later down the line you want to change your mind, you will be able to opt back in again. However, if you do not choose to opt out within this window, there will be no option to opt out at a later date.

Q) How will this affect my existing pending European patent application?

A) If your pending application is granted before 1 Jan 2014 then this will be treated as described in the question above. If it is granted after the new provisions have entered into force (most likely from 1 Jan 2014) you will have the option to select the unitary patent if you wish. If you choose not to select the unitary patent, the provisions described above will apply.

This means that if you have a currently-pending application and you desperately want a unitary patent, you might try to find some ways to delay its grant for another year!

Q) What about a patent application filed during the transitional period?

A) At the end of the transitional period the same opt-out will apply to any patents that were filed during the transitional period. The transitional period will last until at least 1 January 2020, and potentially until 1 January 2027, which means that it will be a long time before the unified patent court becomes truly unavoidable.

Miscellaneous

Q) What’s this got to do with software patents? (see this BBC article)

A: Nothing at all. Unfortunately, IP is often poorly reported in the media, and this is no exception. Software patents are not relevant to the unitary patent, and shouldn’t have been mentioned. This article missed a good opportunity to focus on pros and cons of the unitary patent system from the perspective of industry and the profession.

Links

Draft agreement on Unified Patent Court and draft statute

EPO – unitary patent & unified patent court

(IPcopymark: with thanks to Emily Weal who volunteered to write up this article!)