Lee & Schwerbrock German Law Firm
FAQ - Unitary patent and Unified European Patent court
With decisions of 12th and 17th December 2012 the European Parliament and the European Council have adopted regulations on a new European unitary patent and a unitary patent litigation system. This FAQ is intended to provide some explanations on the new European patent system.
Map of the Unitary patent and the Unified patent court
What is the Unitary patent?
Basically the Unitary patent is the same like the traditional European patent, but it automatically has effect in all member states.
The essential features of the unitary patent are:
What are the relevant legal regulations for the unitary patent and the Unified patent court?
· Regulation of the European Parliament and of the Council implementing enhanced cooperation in the area of the creation of unitary patent protection of 17th December 2012 - “Unitary patent regulation”
· Draft agreement on a unified patent court and draft Statute (Consolidated text of 14thNovember 2012)
What are the rules for patent infringement under the unified patent litigation system?
The unitary patent regulation provides that the unitary patent shall have uniform protection in all member states, the scope of protection and its limitation shall be uniform in all participating member states.
Other than in the original draft, the final adopted regulation does not provide any provision for patent infringement. The provisions regarding patent infringement have been moved into the agreement on the European patent court. Currently, Art.5, 7 of the unitary patent protection only provide that the concrete rules of patent infringement shall be defined by the laws where the applicant has its residence or principal place of business. For foreign applicants without place of business in the EU, the law where the EPO has its seats shall be relevant (currently this means that German law will be applicable).
Once adopted, the Unified Patent Court Agreement will be incorporated into the national laws of the Member States and will therefore provide the governing rules for infringement.
What are the requirements to obtain a unitary patent?
Any European patent can become a unitary patent if:
· it has been granted with identical claims in all participating countries
· it is registered in the register for unitary patent protection
The applicant has to apply to the EPO for unitary protection for a European patent.
How can an applicant apply for a unitary patent?
Applicants will have to file an application for a European patent with the EPO the same way as they do today. The new element is that, no later than one month from the date on which the grant of the European patent has become effective, the applicant can request the EPO to register the unitary effect in the European Patent Register. The patent will than take effect retroactively (from the mention of the grant) in the 25 participating Member States without any additional validation requirement.
What are the cost of a unitary patent?
The concrete fees for the unitary patent will be set up by the EPO within the next year. One of the main intentions of the new unitary patent is that the cost for patents will be significantly reduced.
According to a press release of the EU on 11th December 2012, the cost to obtain a European Patent with unitary effect will be around 5 000 euro. This covers the procedural fees of the EPO as well as the cost of the translation of the claims to the two other procedural languages of the EPO.During the transitional period the cost will be slightly higher, about 6 500 euro.
If the cost for the unitary patent actually will be lower for most applicants is rather doubtful. The official calculations are based on comparison with a classical European which has been validated in all members states patent. The cost for such patent was estimated as more than 36000 Euro. However in fact, most applicants would not validate the patent in all member states but only in the major markets as France, UK and Germany. In such countries no further translation were required and the official fees would cost approximately 4000 to 5000 Euro).
Is there any reduction for renewal fees available?
Yes – according to Art.11.3. Unitary patent regulation, the renewal fees will be reduced if the patent owner files a statement of readiness to license the patent.
From which date will the unitary effect of patent apply?
The unitary effect of a European patent will be effective in all member states from the date of publication of the grant of the European patent (Art.4 Unitary patent regulation).
Is the procedure for a unitary patent different than for a classical European patent?
No - the procedure up to the grant of the patent will be the same as for ('classical') European patents without unitary effect.
After grant, European patents will fall into one of the two categories. A 'classical' European patent needs to be validated in each State for which it has been granted. In contrast, the unitary patent will ensure uniform protection for an invention in 25 Member States (all Member States except Italy and Spain) on a one-stop shop basis.
Does the unitary effect also mean that a unitary patent can be licensed only in whole for all member states together?
No – the unitary can be licensed also in part for certain territories of the participating member states.
Where to apply for aUnitary patent?
Same as for the European patent, the European Patent Organization (“EPO”) will also be responsible to grant the unitary patent. More precisely, on request of the applicant, the EPO will grant “unitary effect” for a European patent and will register the patent in a special Register for unitary patent protection.
In which countries will the Unitary patent be valid?
The Unitary patent will be valid in all EU members states, except Italy and Spain. The countries which are included in the unitary patent system are:
Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Sweden, and the United Kingdom.
According to the latest news, Italy has also signalized its will to join the unitary patent system.
When will the Unitary patent start?
It is expected that the first unitary patents will be granted in 2014. The exact date on which the regulation for unitary patents will apply, depends on how quickly the Unified patent court is established. The unitary patent regulation will apply from either the 1st January 2014 or the date of entry into force of the Agreement on a Unified Patent court, whichever is the later. Unitary patent protection may be requested for any European patent granted on or after this date of application of the regulation.
Will the Unitary patent replace existing European or national patents?
No – the unitary patent will not have any influence on existing European or national patents. The unitary patent will co-exist with national patents and with classical European patents. Patent proprietors will in future be able to choose between various combinations of classical European patents and unitary patents.
Does the principle of exhaustion of rights apply for the unitary patent?
Yes – according to Art. 6 of the Unitary patent regulation, the exhaustion of right principle applies for products that have been placed on the EU market with consent of the patent owner. However, there is an exemption on this rule, if there legitimate grounds for the patent owner to oppose further commercialization of the product.
Translation requirements of the unitary patent - it is necessary to provide translations of the patent or the claims into other language?
The EPO, in cooperation with Google, is working on an efficient machine translation system. The goal is that the applicant does not need provide any more translation into national languages, the unitary patent shall be translated into all national languages automatically by this machine translation.
Only in case of dispute, at the request of a court or an alleged infringer, will the patent proprietor have to provide a full human translation into the relevant language.
According to the EPO machine translation of patents should will be available by the end of 2014 for the languages of the 38 Member States of the European Patent Organization, including the European Union's 27 Member States. Fourteen European languages are already covered.
However, in order to „train“ the machinery translation, during a transition period of up to 12 years, the applicant will still have to provide a translation:
§ where the language of proceedings at the European Patent Office is French or German, the patent proprietor will have to provide a translation of the European patent into English;
§ where the language of proceedings at the EPO is English, the patent proprietor will have to provide a translation of the European patent into any official language of the European Union.
What language is available for the machines translation?
High-quality machine translations – on-line and free of charge - will soon be available in all languages. The European Patent Office (EPO) is already providing a machine translation service for 13 languages (between English and Danish, Dutch, German, Finnish, French, Greek, Hungarian, Italian, Norwegian, Polish, Portuguese, Spanish and Swedish). By the end of 2014 the service is expected to cover 32 languages, including all languages of the European Union, plus important non-European languages such as Chinese, Japanese, Korean and Russian.
The machine translation service "Patent Translate" can be accessed via the following website:http://www.epo.org/searching/free/patent-translate.html
European Patent court
What are the main features of the Unified Patent Court?
1. Decentralized Court of First Instance with local, regional and central divisions located in the Member States
2. Common Court of Appeal
3. Common Registry with local sub-registries
4. Reference to the Court of Justice of the European Union (CJEU) for preliminary rulings whenever a question of Union law requires interpretation (like national courts)
5. Only Member States of the European Union may become Contracting Member States to the Agreement on the Unified Patent Court
6. Internationally composed panels, with legally qualified judges and technically qualified judges
7. Judges appointed by Member States, on the basis of a list prepared by an independent Committee composed of patent practitioners
8. Jurisdiction for both classical European patents and unitary patents
9. Exclusive jurisdiction to hear i.a.
§ actions for infringement of patents and of supplementary protection certificates
§ actions for provisional and protective measures and injunctions
§ actions against decisions of the EPO relating to unitary patents
10. Discretion for local and regional divisions to either deal themselves with counterclaims for revocation or refer such counterclaims to the central division
11. Possibility for opt-out and choice of forum during a 7-year transitional period (extendable)
12. Entry into force once 13 Member States will have ratified
§ including DE, FR and UK
13. Revision clause: Based on user consultation and an opinion of the Unified Patent Court, the Administrative Committee may revise the Agreement to improve the functioning of the Court
14. Court fees: fixed and value-based fees
§ lawyers authorized to practice before national courts or
§ European Patent Attorneys with appropriate qualifications
16. Preliminary draft for the Unified Patent Court's Rules of Procedure under preparation
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