The Unitary Patent – Unitary effect
The European Patent with unitary effect ("Unitary Patent") has been pursued for decades, promising simplification and cost savings. Now it has finally arrived.
The essential objective of the Unitary Patent is a simplification of the procedure by rendering the validation associated with a classical European patent unnecessary and a significant reduction of the costs associated with obtaining and maintaining a territorially broad patent protection in the EU. It is based on a so-called enhanced cooperation (Art. 20 TEU, Art. 326 et. seq. TFEU), in which currently 25 of the 27 EU Member States participate. The non-participating states Spain and Croatia may still decide to participate, whereas in contrast to the classical European patent, the participation of non-EU Member States is excluded.
The legal framework of the Unitary Patent is a mixture of European and international law, the "European Patent Package", consisting of the Regulation on the unitary patent (Regulation (EU) 1257/2012), the Regulation on the applicable translation arrangements (Regulation (EU) 1260/2012), and the Agreement on a Unified Patent Court ("UPC Agreement").
Equal effect in the participating states without further validation
The Unitary Patent provides unitary patent protection in 17 EU Member States, namely the states participating in the enhanced cooperation which already ratified the UPC Agreement (see https://www.epo.org/law-practice/unitary/unitary-patent.html).
Unlike the classical European patent, there is no post-grant fragmentation into individual national patents. Rather, once granted, the Unitary Patent has equal effects in the Member States participating in the enhanced cooperation, and without further validation. However, prerequisite of the unitary effect is the UPC’s exclusive jurisdiction over the Unitary Patent (Art. 18 (2) Subpar. 2 of Regulation 1257/2012). As further ratifications will take place and/or the remaining EU Member States decide to join the enhanced cooperation, the territorial scope of the Unitary Patent regime will widen. There will be no automatic territorial extension of protection to new Member States though, which means that there may be various generations of Unitary Patents with different territorial scope of protection.
The unitary effect also means that the Unitary Patent can be limited, transferred, revoked or lapse only in respect of the whole of the territories of the participating Member States (Art. 3 (2) of Regulation (EU) 1257/2012). A single action will therefore be sufficient to cause invalidity of the Unitary Patent. Further, the scope of the Unitary Patent, including its limitations, is uniform in the territory of unitary effect (Art. 5 (2) of Regulation (EU) 1257/2012). However, licensing remains possible for part of the unitary territory.
Procedure up to grant remains unchanged
The Unitary Patent is granted by the European Patent Office (EPO). Prerequisite for obtaining a Unitary Patent is the filing of a classical European patent application. Due to the accessoriness of the Unitary Patent, the EPC provisions on formal law as well as on substantive patent law, particularly Art. 52 et seqq. EPC regarding patentable inventions, exceptions to patentability, novelty, inventive step, industrial application and extent of protection (Art. 69 EPC) are identical. Only after having gone through the usual application and examination procedure based on the EPC, the applicant may designate the obtained classical European patent as a unitary patent. The request for unitary effect is to be filed within one month after publication of the mention of grant of the European patent. The Unitary Patent can be requested for any European patent granted on or after the date of entry into force of the UPC Agreement (i.e. 1 June 2023).
Maintaining a classical European “bundle” patent remains possible. After its grant, it splits into individual national patents and is accordingly subject to the regulations in force in the respective Member State. Under consideration of limitations on double-patenting, the new Unitary Patent and the classical European "bundle patent" are obtainable by choice and can be combined with each other, e.g., a Unitary Patent for all EU Member States participating in the enhanced cooperation can be obtained with a classical European patent for non-participating Member States and/or EPC member states, extension states and validation states (e.g., United Kingdom, Turkiye, Morocco).
Uniform applicable law
The European Patent Package provides provisions on the applicable material law, which often refer to national law. Since the UPC Agreement constitutes part of the national law of the participating Member States having ratified it, and its Art 25 to 29 contain provisions on the rights to prevent direct and indirect use and on limitations of the effects of a Unitary Patent, these aspects have also been harmonized among the participating Member States. Some aspects are directly dealt with by Regulation (EU) 1257/2012, e.g., the exhaustion of the rights conferred by the Unitary Patent. All sources of law are thus subject to a unified and autonomous interpretation by the UPC, and the Court of Justice of the European Union (CJEU) as far as applicable provisions of EU law are concerned (ref. to Art. 20, 21 of the UPC Agreement).
To ensure the unitary effect and when it comes to the Unitary Patent as an object of property, one legal system is uniformly applicable to the Unitary Patent. According to Art. 7 (1) of Regulation (EU) 1257/2012, the Unitary Patent is treated as a national patent of a single specific Member State in its entirety, namely of the one where the applicant had his residence or (principal) place of business on the date of filing of the application for the European patent. In case of more than one applicant, Art. 7 (2) of Regulation (EU) 1257/2012 serves as a conflict rule. The Member State in which the applicant indicated first in the application had his residence or principal place of business on the filing date shall be decisive. Where this is not possible, these criteria apply to the next applicant, and so on. If none of the joint applicants has a residence/principal place of business in a Member State, the law of the state where an applicant has any kind of place of business applies. If all this is not the case, the law of the Member State in which the EPO has its headquarter, namely Germany, is applicable. This will be of relevance for applicants from non-participating Member States and third states.
However, the European Patent Package does not address contractual aspects like the conclusion and interpretation of license agreements, its termination, questions of warranty and liability and the limitation of contractual claims. Regarding license agreements, the applicable law is determined by Regulation (EC) 592/2008 ("Rome I Regulation"). Thus, free choice of law applies (Art. 3 of the Rome I Regulation).
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