Unitary Patent – Forms for requesting transitional measures are available

Cristina Georgescu
Cristina Georgescu

Today, an inventor can protect an invention in Europe via a national patent or a European patent. According to the European Patent Convention (EPC), the European Patent Office (EPO) examines applications for European patents centrally, saving inventors the costs of parallel applications.

The granted European patents must be validated and maintained individually in each country where they take effect, according to the National Law relating to the EPC.

According to the Unitary Patent Guide, before a Unitary Patent can be registered by the (EPO), the applicant must first obtain a European patent. A European patent application must therefore be filed and processed under the European Patent Convention (EPC) in the same way as today.

Once a European patent has been granted, the proprietor must file a “request for unitary effect” at the EPO to obtain a Unitary Patent.

The new system is intended to start on 1 June 2023, according to the EPO and the Unitary Patent Court. This means that the Agreement on a Unified Patent Court (UPCA) will enter into force, and that the two EU Regulations setting up the Unitary Patent will apply.

The two EU regulations providing the legal framework for the Unitary Patent system are the following:

– EU Regulation No 1257/2012 which creates a “European patent with unitary effect”, commonly referred to as “Unitary Patent”;

– EU Regulation No 1260/2012 which lays down the translation arrangements for Unitary Patents.

According to epo.org, the official website of EPO, the EU regulations establishing the Unitary Patent system entered into force on 20 January 2013, but they will only apply as from the date of entry into force of the UPCA.

A Unitary Patent may be requested for any European patent granted on or after the date of entry into force of the UPCA.

Unitary Patents will remove the steps of national validation procedures. There will be only one procedure, currency and deadline and no obligation to use a representative.

No fees are due for the filing and examination of the request for unitary effect or for registration of a Unitary Patent.

All post-grant administration will be handled centrally by the EPO.

Unitary Patents will make it possible to get patent protection in up to 25 EU Member States by submitting a single request to the EPO. They will build on European patents granted by the EPO under the rules of the EPC.

After a European patent is granted, the patent proprietor will be able to request unitary effect, thereby getting a Unitary Patent which provides uniform patent protection in up to 25 EU Member States.

According to the epo.org and unified-patent-court.org, the 17 states in enhanced cooperation which already ratified the Agreements and will participate in the Unitary Patent when it starts are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.

The 25 states participating in enhanced cooperation to bring about the Unitary Patent system are: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden.

With a view to supporting users in an early uptake of the Unitary Patent, the EPO has decided to introduce two transitional measures applicable to European patent applications having reached the final phase of the grant procedure. These measures are available ahead of the entry into force of the Unitary Patent system, as of 1 January 2023.

The two transitional measures are interrelated but separate from a procedural perspective. They will be available for European patent applications which have reached the final phase of the grant proceedings.

According to UPC, the Unitary Patent system is inextricably linked to the creation of the Unified Patent Court (UPC), which will have jurisdiction over Unitary Patents and “classic” European patents.

The UPC is a new international court set up to decide on the infringement and validity of Unitary Patents and “classic” European patents under the Agreement on a Unified Patent Court of 19 February 2013.

According to unified-patent-court.org, the Court is represented by the President of the Court of Appeal who acts as chairperson of the Presidium.

According to unified-patent-court.org:

Language of Proceedings at the Court of First Instance: The language of proceedings before any local or regional division of the Court of First Instance is an official European Union language which is the official language or one of the official languages of the state hosting the relevant division, or the official language(s) designated by the states sharing a regional division. States may designate one or more of the official languages of the EPO (English, French or German) as the language of proceedings of their local or regional division. Before the central division or where the parties so agree, the language of proceedings may be the language in which the patent was granted (English, French or German).

Language of Proceedings at the Court of Appeal: Regarding the Court of Appeal, the language of proceedings is in general the language that was used in proceedings before the Court of First Instance of that case.

Currently, national courts and authorities decide on the infringement and validity of European patents.

The UPC Agreement created a specialized patent court with exclusive jurisdiction for litigation relating to Unitary Patents and European patents.

The UPC will provide a central revocation action, separate from the EPO’s opposition procedure, at any time during the life of the patent.

Parties can be represented before the UPC by lawyers authorized to practice before a court of a Contracting Member State.

Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the EPO and who have appropriate qualifications such as a European Patent Litigation Certificate (EPLC).

According to the Rules of Procedure of the Unified Patent Court, the applicants for and proprietors of a “classic” European patent, as well as holders of a supplementary protection certificate (SPC) issued for a product protected by a “classic” European patent, can opt-out their application, patent or SPC from the exclusive competence of the UPC. As a result, the UPC will have no jurisdiction concerning any litigation related to this application, patent or SPC.

The following conditions must be met for a valid opt-out or a withdrawal of an unauthorized opt-out pursuant to the Rules of Procedure of the UPC, according to unified-patent-court.org:

– the opt-out can only be made in respect of all states for which the European patent has been granted or which have been designated in the application,

– an opt-out is only possible as long as no action has been brought before the UPC in respect of this application, patent or SPC.

It is not possible to opt-out a Unitary Patent from the UPC’s competence.

It is also possible to correct an opt-out or to withdraw an opt-out, or to file an application to remove an unauthorised opt-out or unauthorised withdrawal of an opt-out. An opt-out can be withdrawn anytime as long as no action has been brought before a national Court in respect of the application, patent or SPC subject to the opt-out.

According to epo.org, the EPO has published the booklet “National measures accompanying the implementation of the Unitary Patent” which provides a concise overview of the most important national measures accompanying the implementation of the Unitary Patent in the participating Member States having ratified the UPCA.

Those preferring to seek protection in individual EPC contracting states can still file patent applications with those states’ national patent offices, and it also remains possible to validate a European patent in one or more EPC contracting states.

A Unitary Patent can be combined with a “classic” European patent: it is possible to have a European patent registered as a Unitary Patent and additionally validate that European patent in the other EPC contracting states whose territories are not covered by the Unitary Patent.

However, it is not possible to have double protection of an invention by a classic European patent and a Unitary Patent in the states covered by the Unitary Patent, according to epo.org.

Romanian patent attorney Cristina Georgescu

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