EU Patent - good news or bad news?

September 24, 2013

There are moves afoot to introduce an EU patent. Is this good news or bad for your business?

At present there are 28 members of the EU. The European patent covers all of those countries and, in addition covers among others Switzerland, Turkey, Norway. The costs, post grant, of maintaining patent protection in all the countries of Europe is very expensive, and especially when compared to the cost of, for example, a US patent. It is for this reason that many patent owners, especially in the ICT sector, choose to make their European patent effective in four of five countries- typically UK, Germany, France, Italy, Netherlands or Spain. There are now moves afoot to introduce a truly European patent which will have unitary effect across the whole of the EU (almost!). The EU patent should have a simplified and cheaper language regime. The EU patent will have a single renewal fee. However, the size of this fee is as yet undetermined. On the plus side for patent owners, through a single infringement proceeding, they will be able to obtain and enforce pan-EU injunctions. This should save considerable costs. On the negative side for patent owners, through a single invalidity proceeding (central-attack), they may lose the EU patent and all protection in Europe at any time.

How will I get a EU patent?

The process for obtaining a EU patent (unitary patent) is well understood. It will piggy-back on the existing process for obtaining a European patent (bundle of national patents). At the point of grant one simply chooses whether to have a unitary EU patent or a bundle of national patents.

Must I use the EU Patent?

No, it will still be possible to file national patent applications and it will also be possible to file a European patent and obtain a bundle of national patents.

Will the EU patent cover all of the EU?

All except for Italy and Spain, who are unhappy about the language regime which favours the EU languages English, French and German.

When will the EU patent come into force?

Not until the related Agreement on a Unified Patent Court, which was signed by all EU member states except Poland and Spain, enters into force, on or after 1 January 2014. It is not expected to come into force before 2015.

Will the EU patent have an impact on European patents?

Yes, indirectly. The Agreement on the Unified Patent Court creates a specialised patent court ("Unified Patent Court", or UPC) with exclusive jurisdiction for litigation relating to not only EU patents but also European patents. The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will be composed of a central division (with seat in Paris and two sections in London and Munich) and by several local and regional divisions in the Contracting Member States to the Agreement. The Court of Appeal will be located in Luxembourg. The Agreement was signed by 25 EU Member States on 19 February 2013. It will need to be ratified by at least 13 states, including France, Germany and the United Kingdom to enter into force.

Is the UPC good or bad news for European patents?

It’s good news if you want to use the European patent (bundle of national patents) as a ‘lite’ version of the EU patent. This may be desirable if the renewal fee for the EU patent is too high. However, it’s potentially bad news if you want to use the European patent as an alternative to the EU patent in order to avoid ‘central attack’ via the UPC. However, this threat of central attack has been recognised and it will be possible for owners of European patents (bundles of national patents) to ‘opt-out’ of the UPC jurisdiction for at least 7 years. We will keep you informed of developments. However, if you have any particular questions please contact Paul Higgin at [email protected]

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.