Unitary Patent Information Series (Article 2) - The Unitary Patent

24 六月 2013

The Unitary Patent

There are three key elements to the Unitary Patent package:
1.The Unitary Patent
2.The Unified Patent Court
3.Translation Arrangements

The second article in our Unitary Patent Information series looks at the Unitary Patent and how it is set to work:

The Unitary Patent (UP) will be a  European patent granted by the European Patent Office (EPO) under the provisions of the European Patent Convention, which has unitary effect across all of the participating states (i.e. those who have approved the UP Regulation).
The currently participating member states are 25 out of the 27 EU member states (which are listed here). Notably, Spain and Italy have elected to
remain outside the UP system, at least for the time being.

How will it work?

Under the current European (EP) patent system, a patent application filed at the EPO, when granted, results in a bundle of independent national patents in up to 40 European states, depending on where the patentee chooses to have it validated. National validation involves fulfilling certain criteria (such as the filing of a translation and/or appointment of a local representative), which differ from state to state. Once these criteria have been met for a given state  the patentee essentially has a national patent in that state. Accordingly, separate national renewal fees will become due in each state during the life of the respective national patents. The varying requirements for validation and renewal create considerable cost and paperwork for the patentee.

Under the new Unitary Patent system, an inventor or applicant interested in obtaining a UP needs to file and prosecute a European patent application before the EPO in the same way as with the current system. However, upon grant the European patent may optionally be validated as a “European Patent with Unitary Effect”. This can be done by filing a “Request for a Unitary Protection” within one month of the publication of grant. The European Patent will then be entered into a newly created “Register for European Patents with Unitary Effect” (To obtain protection in non-participating EPC states, the patentee will additionally need to validate the European patent in these states as per the current system, and will end up with national patents in these states alongside his UP.)
If the patentee opts to validate the European Patent as a UP using the above process, there will be no national patents in the participating states.  Only one representative will need to be appointed for the UP, and only one annual renewal fee will need to be paid, to the EPO, during the life of the Unitary Patent to keep it in force. The level of these fees is currently unknown. During a transitional period lasting between 6 and 12 years one translation (into either English or any other official language of the European Union) will required, but after this period there will be no  translation requirements (further information on the translation requirements and transitional period will be published in the ongoing series).

The resulting UP will be a single patent right that confers protection in all of the participating states from the date of publication of grant of the European Patent.  The scope of protection will be identical across all the participating states, and it will not be possible to limit or nullify the UP with respect to only a portion of the territory of the participating member states. However,  the UP may be licensed for a portion of the territory only.
A UP will be subject to the jurisdiction of the newly created Unified Patent Court in matters regarding infringement, validity, damages derived from provisional protection, actions in relation to prior use, and declarations of non-infringement.

Next steps

The UP Regulation was approved by the European Parliament on 11 December 2012 and entered into force on 20 January 2013. However; it will not become effective until the UPC Agreement enters into force. In the meantime, a Special Committee of the EPO has been charged with developing the rules for the new UP, including setting fee amounts, and we anticipate the release of detailed information on costs and procedures over the coming months.

For further information or should you have any queries, please contact one of our experts from the panel on the right hand side of the page.

The next article in the series  will look at the set-up and jurisdiction of the Unified Patent Court.

David O'Connell
David O'Connell
位置: 布里斯托(英国) 荷兰(荷兰)
Robert Margue
Robert Margue
位置: 慕尼黑(德国)

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