New Options Are Coming for European Patent Protection

Changes are coming in 2023 to the way that patents are obtained and enforced in Europe. Currently, inventions are protected in Europe on a country-by-country basis, with patent applications examined  either i) individually, by the intellectual property authority in each of the EU countries, or ii) centrally, by the European Patent Office.  The patent rights granted via either option are enforced by patent courts in the individual EU countries.

 A new option will soon be available through the European Patent Office, namely a “Unitary Patent.” Complementing the Unitary Patent will be the “Unified Patent Court,” which will have jurisdiction over the enforcement of and validity challenges to a Unitary Patent. The effective date is currently anticipated to be June 1, 2023. 

The aim of the Unitary Patent and Unified Patent Court is to offer businesses a simpler alternative to the existing system and to introduce a more cost-effective route to patent protection and dispute resolution.

Comparison of the Options

National Patents. Patent protection via national patents requires filing separate applications in each European country in which patent protection is sought. Examination of the application is conducted by each jurisdiction in which it is filed, and infringement and validity disputes are handled by the court system of each applicable jurisdiction.

European Patents. For European patents, a single application is filed with the European Patent Office (“EPO”), and if patent protection is granted, the owner can register the European patent in any or all of 39 countries—EU member states, plus several other countries, such as Turkey, Norway, and Switzerland. Like national patents, infringement and validity disputes are adjudicated by the court system of each jurisdiction in which the patent is registered. Significantly, the effect of such adjudications is limited to only the country where the dispute is tried. In other words, if a patent owner with a European patent registered in 10 countries prevails in an infringement suit in one country, the adjudication has no effect in the other nine countries where it is registered.

Unitary Patents. For Unitary Patents, a single application is filed in the EPO.  When the EPO grants the patent application, an applicant may request a Unitary Patent.  A Unitary Patent will provide patent protection without further action across all member countries participating in the Unitary Patent System, which at present are Germany, France, Italy, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. Additional EU member states are expected to join in the future.  If an applicant wishes to have patent protection in a EU country that is not participating in the Unitary Patent System, the applicant may request registration of the patent in any of the other countries which participate in the traditional European patent process as discussed above. 

The Unified Patent Court

The Unified Patent Court will have jurisdiction over the enforcement and revocation of Unitary Patents and will be an optional venue for enforcement and revocation of existing European patents which have been registered and maintained in the participating member states of the Unitary Patent System. A decision by the Unified Patent Court will be effective across the participating member states, enabling the enforcement of patent rights throughout the member states and challenges to validity in a single action, reducing the cost and complexity of patent enforcement in Europe. The Unified Patent Court aims to reach a decision in proceedings before it within 14 Months from initiation, which is considerably faster than similar national proceedings in many member states.

In addition to Unitary Patents, all European national patents granted by the EPO under the traditional European patent process and registered in individual countries participating in the Unitary Patent System will be subject to the jurisdiction of both the Unified Patent Court and of the court system for the individual countries. This joint jurisdiction will exist for a seven-year transitional period, after which, the Unified Patent Court will have sole jurisdiction over Unitary Patents.  Patent owners, may, however, choose to opt European national patents out of the jurisdiction of the Unified Patent Court by means of a filing with the EPO.

The Unitary Patent and the Unified Patent Court may be attractive to businesses that pursue patent protection in Europe, but there is no one right answer for determining who should take advantage of this new alternative. Reach out to the attorneys at Boyle Fredrickson to discuss your options and what makes sense for your company.