Frequently Asked Questions1. What is the Unitary Patent
The Unitary Patent is a "European patent with unitary effect". It is uniformly valid in the territories of all member states participating in the Unitary Patent system. It is, however, not valid in all states of the European Union!
2. Which member states participate in the Unitary Patent system?
As of January 2022, the following 17 states will participate in the unitary patent system from its start: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, and Sweden.
The Czech Republic, Cyprus, Greece, Hungary, Ireland, Romania and Slovakia have signed the Agreement but have not yet ratified it. It is expected that these states will join in the future, so that a total of 24 states will participate in the Unitary Patent system.
The EU countries Spain, Poland and Croatia will not participate in the new system, nor will the United Kingdom.
3. When will the unitary patent system enter into force?
The preparatory phase has started in January 2022 and is expected to last at least eight months. After completion of the preparatory phase, the system should enter within force 3 - 4 months after the deposit of the ratification note of the Federal Republic of Germany. As it stands today, the start of the Unitary Patent system can be expected for the end of 2022 or the beginning of 2023.
4. Is the Unitary Patent independent of the existing European patent?
No. The Unitary Patent represents an extension of a granted European patent. In addition to the established validation of a European patent in the member states of the European Patent Convention, it will be possible to file a request for unitary effect for any granted European patent, after which it will have unitary effect in the participating member states. In the non-participating member states, the European patent can be validated in the conventional way.
5. Will there be any changes in the filing and prosecution of European patents?
No. The Unitary Patent comes into play after grant of a European patent. Only after the grant of a European patent it has to be decided whether a request for unitary effect is filed for the European patent or not.
6. For which European patents can unitary effect be requested?
Unitary Patent protection can be requested for any European patent granted on or after the date of entry into force of the new system. The unitary effect applies to those member states that are already participants in the unitary patent system on that date.
For the owner of a pending European patent application, it may thus make sense to delay the grant in order to be able to request unitary effect for the granted European patent. The European Patent Office has already announced to accept requests for unitary effect 3 - 4 months before the start of the unitary patent system.
7. How can a request for unitary effect be filed?
A request for unitary effect must be filed in writing with the EPO within a period of 1 month after the mention of the grant of the European patent. There are no official fees for filing the request, but it must be accompanied by a full translation of the European patent. An English translation is required if the language of the patent is not English, or a translation into another official language of the EU (e.g. German) if the language of the patent is English.
8. Can a unitary patent coexist with the validation of the same European patent?
A European patent can exist as a unitary patent in participating states and at the same time be validated in non-participating states, for example in the UK, Switzerland, Spain or Turkey.
However, obtaining a unitary patent from a European patent in parallel with a validation of the same European patent in participating member states was explicitly excluded in Art 4(2) of the EU Regulation on unitary patent protection 1257/2012. A European patent for which unitary effect has been requested thus cannot, for example, be validated in Germany.
Nevertheless, national law may allow the existence of identical national patents in parallel to the unitary patent. At least in Austria and Germany this should be permissible.
9. What are the advantages of a unitary patent?
The main advantage of a unitary patent compared to conventional validations in the participating states is the lower costs, if patent protection is desired in several of the participating states. No validations have to be carried out and therefore, apart from the above-mentioned translation into English or German, no further translations of the patent specification into the respective national language are required. Furthermore, with the unitary patent, no national renewal fees are due in the participating states, but increased renewal fees are to be paid centrally to the EPO. The cost advantage of the unitary patent increases with the number of countries in which a classical European patent would be validated.
From the patent owner's point of view, further advantages of the unitary patent are that cross-border patent infringements can be prosecuted more easily by filing an action with the Unified Patent Court (UPC), and the fact that assignments, licenses and other rights no longer have to be registered individually for each country in the national patent registers, but are administered centrally by the EPO.
10. What are the disadvantages of a unitary patent?
A unitary patent confers uniform protection in the participating states, i.e. patent infringements can be prosecuted by a single centralized procedure before the Unified Patent Court. Conversely, however, this also means that a unitary patent can be brought down entirely by a single nullity decision from the Unified Patent Court. For the patent proprietor, the unitary patent therefore poses an increased risk compared to the current system, in which the national validations of European patents are treated completely independently of each other.
11. Will there be changes in the enforcement of European patents?
Yes. Unitary patents can only be enforced before the Unified Patent Court (UPC). This new patent court will have jurisdiction over both unitary patents and conventional European patents.
For unitary patents, the jurisdiction of the UPC is exclusive and mandatory. Conventional European patents, on the other hand, can be enforced either before the UPC or before the national courts during a transitional period of 7 years from the entry into force of the unitary patent system. Only national patents will remain under the exclusive jurisdiction of national courts.
This is a substantial and fundamental change from the current system, where patent infringement proceedings and patent revocation proceedings are heard before national courts and authorities (in Austria, the Commercial Court of Vienna and the Austrian Patent Office, respectively).
12. What is the Unified Patent Court?
The Unified Patent Court (UPC) was created as a separate court system to decide on the issues of infringement and validity of both Unitary Patents and conventional validations of European patents. Judgments of the Unified Patent Court are to be recognized in all participating states. The jurisdiction of national courts is to be limited to national patents.
The UPC has a decentralized structure and shall have a central chamber as well as several regional and local chambers in the member states. The local chamber for Austria has its seat in Vienna, the central chamber has its seat in Paris and a branch office in Munich. There is also a court of appeal with its seat in Luxembourg, as well as the European Court of Justice as a court of appeal.
It is foreseeable that proceedings before the UPC will be considerably more expensive compared to Austrian patent infringement proceedings before the Commercial Court of Vienna or nullity proceedings before the Nullity Division of the Austrian Patent Office. The court fees alone for infringement proceedings amount to at least EUR 11,000 (plus a component depending on the value in dispute); those for nullity proceedings EUR 20,000. The total costs of infringement proceedings before the UPC are expected to be several times higher than the usual costs of infringement proceedings in Austria so far; the same applies to nullity proceedings.
13. Is it possible to avoid the jurisdiction of the Unified Patent Court for existing European patents?
Yes. During a transitional period of 7 years, it is possible to exclude the jurisdiction of the Unified Patent Court for granted European patents (so-called opt-out). Opted-out European patents will then remain under the exclusive jurisdiction of the respective national courts or authorities.
An opt-out is useful to prevent an existing European patent from being attacked by a central nullity petition before the UPC and being destroyed for all participating states. The opt-out can be revoked at any time (opt-in) if the jurisdiction of the UPC is desired again.
Owners of European patents or patent applications should examine their patent portfolio to see whether they accept the jurisdiction of the new Unified Patent Court or prefer the proven path of national proceedings.