04 May 2016
The patenting system across the European Union is undergoing major change, and is currently the subject of the largest overhaul in 30 years. Within the next year (the exact date is shortly to be confirmed), the Unified Patent Court (UPC), a new court designed to allow pan-European patent revocation and infringement actions, will commence operating. At the same time, the Unitary Patent (UP), a single patent with effect across all participating European Union member states, will also come into effect. Here, we will explore the impact that the new system will have on businesses, and look at the advantages, as well as disadvantages, that it will bring with it.
The Unitary Patent
Following central examination by the EPO, a classical European Patent (EP) provides a bundle of separate national patents each effective in those states in which it is validated. In contrast, the new Unitary Patent (UP), whilst still examined by the EPO, gives rise to a single patent right which covers all participating European Union states.
Notably, only a single fee is payable to renew a UP, rather than a separate fee per state. The renewal fee will be set to be equivalent to the current renewal fees for the four largest states, resulting in reduced renewal fees for applicants who would normally validate an EP in a larger number of states. However, it will not be possible to let protection lapse in some states to reduce overall renewal fees in the latter years of the patent term, as with classical EPs.
The Unified Patent Court
The UPC will enable pan-European patent revocation and infringement actions in respect of both new UPs and classical EPs, both of which will in due course be subject to the exclusive jurisdiction of the UPC. This is intended to reduce the costs of litigation and to harmonise patent litigation and revocation proceedings across Europe. In addition, patentees will now have access to pan-European patent infringement injunctions.
The UPC will be made up of specialist patent judges, and will consist of a number of Courts located in various participating states, including a central division split across Paris, London, and Munich and having the exclusive ability to deal with revocation actions and declarations of non-infringement, a number of local and regional divisions, and a Court of Appeal based in Luxembourg.
Transitional period and opting-out
Infringement or revocation actions in respect of a classical EP may still be brought before a national court during an initial transitional period of seven years (extendable for another seven years) following the introduction of the UPC.
Importantly, patentees will have the opportunity to opt-out of the exclusive competence of the UPC in respect of current or pending classical EPs during the transitional period.
New options for patent protection in Europe
Following the introduction of the UP and the UPC, there will be four alternative routes for seeking patent protection in Europe.
Among the most pressing issues for businesses having patent interests in Europe are:
Clearly, these major changes will significantly alter the patent landscape across Europe and it is important for businesses to consider their strategy now so as to ensure that they are in the best possible position for the dawn of this new era in Europe.
Fore more information about this topic please contact your attorney at Mathys & Squire, or send an email at [email protected].
Sign up to our mailing list to receive Mathys Matters, our monthly newsletter covering the latest IP news, industry insights, events and case law.
If you are interested in receiving quarterly newsletters relevant to our core sector groups - IT & engineering ('Inside Wires') and life sciences & chemistry ('Under the Microscope') - please select your preference(s) below:
Please select your practice area(s) of interest: