28 de February de 2023 // Joana Eugenio

The Unitary Patent: decision on whether to enter or to remain on the classic route

Tempo de Leitura //

Currently, an invention can be protected in Europe by several national patents or a European patent. The European Patent Office (EPO), as the official authority, examines European patent applications, saving costs for inventors compared to multiple parallel national patent applications, while ensuring the high quality of granted European patents. A granted European patent corresponds to a bundle of national patents, which, following the classic route, are simply validated and maintained in each country of interest to the patent holder. Under the classic route, the European patent application is centralised at the EPO until it is granted/opposed, after which it is treated as a national patent in each contracting state, subject to the respective national legislation and fees of each country.

The creation of an alternative route to the classic route has been under discussion for around 40 years, whereby not only the patent application would be centralised, but also its entire duration until the end of its 20-year life (with a possible extension for patents for medicinal or plant protection products). The Unitary Patent thus emerged and has taken shape in recent years, with significant developments in the application of the so-called “EU Patent Package” (Unitary Patent Regulation – Regulation 1257/2012), which implements enhanced cooperation in this area, together with the applicable translation arrangements (Regulation 1260/2012) and the Agreement on the Unified Patent Court (UPC).

A European patent with unitary effect is a European patent which, at the request of the patent holder and through the filing of a single application, can obtain unitary effect throughout the territory of the 25 participating Member States of the European Union. The European patent with unitary effect will initially apply in 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden, with the possibility of other Member States of the enhanced cooperation (Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania and Slovakia) joining later. Spain and Croatia are the only EU Member States not considering joining at this stage.

It was recently announced that the start of implementation of the new unitary system (“sunrise period”) will begin on 1 March 2023 and the doors of the UPC will open on 1 June 2023, and some measures for newly granted European patents can already be taken, including and where applicable the request to delay publication of the mention of grant.

The aim of the unitary route is to provide a single pan-European patent and a single court for litigation of European patents. While this package is being heralded by some as a means to make access to the patent system easier, less costly and more legally secure by providing uniform patent protection across all participating Member States, it remains to be seen whether the current proposals will actually deliver these benefits to patents. In a business fabric such as the Portuguese one, led essentially by SMEs, it is assumed that the new unitary system will be an economic asset for maintaining a portfolio of European patents. However, in the case of rights with litigation perspectives or companies that validate in fewer than four countries of the European Patent Convention (EPC), it may be more cost effective to choose the classic route.

The decision on whether the unitary route or the classic route is appropriate, including some particularities of the new system such as the “opt-out”, which governs the choice as to whether the UPC will have exclusive jurisdiction over the patent or whether jurisdiction will remain with the national courts, will always be made on a case-by-case basis and should be subject to advice adapted to each scenario. The total cost of a patent at the end of its term depends on factors as varied as the desired territorial scope, the markets of interest, the litigation doctrine, the technical nature of the inventions and their European landscape, among others, and it is of enormous importance to devise, carefully and in an informed manner, the appropriate strategy for each case.

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