On 1 June 2023, the most important change in 50 years in the field of patents in Europe enters into force. With effect from that date, companies will be able to acquire a “unitary patent”. This patent will make it possible to obtain the same patent protection covering 17 EU Member States with one translation and the payment of only one renewal fee. At the same time, from 1 June 2023 onwards, the Unified Patent Court (“UPC”) will start operating. This is an entirely new international court which will deal exclusively with patent disputes. The court will have a local section in Brussels, where patent litigation will be possible in French, German, Dutch and English.
Why unitary patents?
Since 1973, companies have been able to apply for a “European” patent for inventions. Although the application procedure before the European Patent Office is uniform, upon grant the applicant does not obtain a single title, but a bundle of separate national patent titles. Once granted, the applicant must choose in which countries it wants a national patent and then still needs to comply with national requirements in these countries (e.g. translation of the claims into national languages and payment of national fees).
As a result, when the European patent has to be granted for many Member States (and thus constitutes a large bundle of national titles), it can be very costly. In addition, it is also administratively quite complex because formalities have to be completed for each country individually.
Therefore, beginning in the early 2000s, the European Union began working to create a simplified and truly uniform patent title for the EU Member States. This was a politically difficult journey, but eventually a political compromise emerged between a large number of EU Member States, and this led to two European Unitary Patent Regulations in 2012. Nevertheless, it has still taken until now for this new patent title to become a reality, as Member States felt that its entry into force should be linked to a new patent court. Because of political compromises and the link with the court, the unitary patent will start with “only” 17 EU Member States (Belgium, Germany, the Netherlands, France, Italy, Sweden, Finland, Estonia, Latvia, Lithuania, Portugal, Bulgaria, Austria, Denmark, Luxembourg, Malta and Slovenia). Further Member States are expected to join in the coming years.
European patents vs. unitary patents
European patents will not disappear. The unitary patent will be a special form of the classic European patent. The application procedure will be the same: applying to the European Patent Office in Munich, which also grants the patents. After a European patent is granted, the applicant will have one month to apply for unitary patent protection covering 17 EU Member States.
One additional translation must be made along with the application for the unitary patent: an English translation if the patent was granted in German or French, and a translation into an official EU language of the applicant’s choice for patents granted in English.
Instead of having to pay national renewal fees in each of the Member States, the holder of a unitary patent will only have to pay one renewal fee to the European Patent Office. The renewal fee roughly corresponds to the cost of a classic European bundle patent for four Member States. In other words, for the price of patent protection in four Member States and with fewer formalities, the holder gets immediate protection for 17 Member States.
As the unitary patent is a single title, it can only be transferred for the 17 Member States collectively. However, licences per Member State remain possible. The revocation of a unitary patent also has effect for all 17 Member States.
In addition to the unitary patent, the holder of a European patent for Member States other than the 17 unitary Member States (e.g. Spain or Poland) will still be able to acquire a classic bundle patent in parallel.
Unified Patent Court
From 1 June 2023, the doors will also open to an entirely new court, the Unified Patent Court or “UPC”.
The raison d’être of the UPC stems from the problem that, in the past, tackling infringements of European patents required parallel proceedings in different European Member States. Indeed, each Member State had exclusive competence to rule on the validity of the national part of a European patent. This often created divergent judgments and high costs for patent holders taking action to enforce their rights.
The UPC will only have jurisdiction over disputes relating to unitary patents and classic European patents. Moreover, for European patents, during a 7-year transition period (extensible to 14 years), there will be the possibility to opt out as long as proceedings have not yet started before the UPC concerning the European patent. Patent holders have already make these opt-outs since 1 March 2023 through the UPC’s Case Management System. The opt-out can be withdrawn once, provided that proceedings before a national court have not yet started.
The UPC will consist of a court of first instance and a court of appeal, the latter being located in Luxembourg. The court of first instance will be composed of regional, local and central divisions in several of the participating Member States, including a local division in Belgium. For the Norwegian–Baltic area (Sweden, Estonia, Latvia and Lithuania), there is cooperation in a regional division. These local and regional divisions mainly have jurisdiction over infringement cases. For independent nullity actions against patents, three central divisions of the UPC also have jurisdiction. These are located in Munich, Paris and Milan (the latter having been designated recently after London dropped out due to Brexit).
The UPC has its own rules of procedure and its own judges. For each case before a local or regional division, a multinational panel of three judges will be appointed. In Member States with fewer than 50 patent cases per year (such as Belgium), this will be one national judge and two judges from outside the Member State. In Member States with more than 50 patent cases per year (e.g. Germany and the Netherlands), the panel will consist of two national judges and one judge from another Member State. For counterclaims for revocation of a patent before the local or regional division, and for independent revocation claims before the central divisions, a technically qualified judge will be added to the panel.
The Belgian local division will be in Brussels in the premises of the FPS Economy. Judge Sam Granata has been appointed as the permanent Belgian judge. The local division in Brussels will be unique in that it will be the only division where litigation can be conducted in four languages: Dutch, German, French and English. This may have the advantage that Belgian companies will be able to enforce their patent rights for 17 Member States through the Belgian division. For international companies, it will be possible to litigate in English in Belgium.
Author: Pieter Callens – IP/IT partner at Eubelius – Mr. Callens assisted the Belgian government as a consultant during the 2010 Belgian EU presidency in negotiating and drafting the texts of the EU “patent package”.
