CSG Law Alert: The Unitary Patent System to Begin on June 1, 2023 in Europe

On February 17, 2023, Germany ratified the Agreement on a Unified Patent Court (“UPCA”). This ratification was the final condition that needed to be satisfied in order for the UPCA to enter into force for the participating member states of the European Union. The long-delayed Unitary Patent system will begin on June 1, 2023, establishing the European patent with unitary effect (commonly referred to as the Unitary Patent) and the Unified Patent Court.

Currently, under the European Patent Convention (“EPC”), granted European patents are validated in one or more EPC contracting states on a country-by-country basis, resulting in so-called classical European patents. Classical European patents provide patent protection only in the validated states. In contrast, the new Unitary Patent will provide uniform patent protection in all participating member states1 of the European Union. To obtain a Unitary Patent, European patent applicants must file a single request for unitary effect with the European Patent Office (“EPO”) no later than one month from grant of the European patent application. Moving forward, the current validation system and the Unitary Patent system will coexist.

The Unified Patent Court will have jurisdiction over all Unitary Patents and, by default, classical European patents. As a consequence, Unitary Patents and classical European patents under the jurisdiction of the Unified Patent Court are enforced or invalidated across all participating member states in a single action. However, during a transitional period of seven years, which may be extended for a further seven years, owners of classical European patents may opt-out of the jurisdiction of the Unified Patent Court as long as no action has been brought before the Unified Patent Court with respect to such classical European patents. By opting-out, classical European patents must be individually enforced or invalidated in the national courts of the validated states. The opt-out can be filed during a Sunrise Period, which began on March 1, 2023.

To facilitate the implementation of the Unitary Patent system, the EPO has introduced two interrelated transitional measures that are currently available to European patent applications in which an intention to grant has been issued. The first transitional measure enables applicants to file an early request for unitary effect prior to the start of the Unitary Patent system. The second transitional measure allows applicants to request a delay in issuing the decision to grant. These two transitional measures allow for an applicant to obtain a Unitary Patent for a European patent application which would otherwise have been granted prior to entry into force of the UPCA.

In view of the entry into force of the UPCA, European patent owners and applicants have a number of upcoming decisions to make, including whether to request unitary effect for granted European patents and whether to opt-out of the jurisdiction of the Unified Patent Court for existing classical European patents and applications. There are many factors that should be considered in making these decisions, such as, for example, costs, likelihood of enforcement, administrative overhead, and uncertainty. If you have any questions about the Unitary Patent system, please contact one of the authors.

1 As of the date of this publication, the participating member states are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.