European Patent with Unitary Effect

May 11, 2015

We provide an update on recent progress towards the issuance of the first European patent with unitary effect.

A European patent with unitary effect will be a European Patent which covers all the EU member states with the exception of Italy and Spain who are currently not participating.

Once a European Patent application has been allowed by the EPO the applicant will have a choice of whether to have a European patent with unitary effect that covers the participating member states, or alternatively, to obtain a classical European Patent which must then be validated in one or more states to obtain a bundle of national patents.

The first European patent with unitary effect will not be granted by the European Patent Office (EPO) until a new court called the Unified Patent Court (UPC) comes into existence. For this to happen, an Agreement must be ratified by thirteen member states including the UK, Germany and France. Ratification is ongoing and is expected to be completed sometime towards the end of 2015, and the first European patents with unitary effect should then start to be granted.

Ratification update

Luxembourg’s Parliament have recently voted unanimously to ratify the Agreement. This makes it the 7th country to ratify in addition to Austria, Belgium, Denmark, France, Malta and Sweden.

The ratification of the agreement has though been challenged in Belgium in an action filed at the Belgian Constitutional Court by The European Software Market Association and other plaintiffs. The Plaintiffs allege, amongst other things, that the Dutch-speaking Belgian people have been discriminated against by the language regulations.

At this stage there are no indications as to how quickly the challenge will be resolved, but in any event it is reported to be unlikely to delay the UPC coming into existence.

Renewal fees

The Select Committee of the EPO dealing with arrangements for the European patent with unitary effect have met to discuss proposals for the level of renewal fees.

In summary, the Committee discussed two alternative proposals on the level of renewal fees submitted by the EPO. These proposals foresee fee levels of respectively the equivalent of the renewal fees which have to be paid for the four or five countries out of the twenty-five EU participating member states in which most European patents are currently validated (TOP 4 and TOP 5). The TOP 5 proposal in addition foresees a 25% fee reduction for the first ten years of the lifetime of the patent for specific entities such as SMEs, universities and public research institutions.

A full report of the meeting can be found at (see third article).

UKIPO study on patent litigation – UPC implications

As part of its UPC studies, the UKIPO has published a study here on the volume of patent litigation in the English courts.

It notes that “UK businesses face a difficult decision: should they or should they not seek to obtain UP protection? Finding the right answer to this question is important because if UK businesses and inventors choose to obtain UPs – rather than GBs or the traditional EPs – then they will not be able to undertake litigation at national venues...”

The report concludes that: “ ... in the coming years patentees may decide to maintain a spread of different types of patents – GB, EP and UP – a decision that would leave multiple potential litigation venues open...”

Update – Spanish challenge dismissed

The Court of Justice of the European Union has dismissed Spain’s challenge to the legality of the Unitary Patent. This decision overcomes the last remaining legal obstacle to the introduction of the Unitary Patent and Unified Patent Court system.

Following this decision, Italy, which had previously opposed the Unitary Patent, has released a statement saying that it is now their intention to join the Unitary Patent system. It remains to be seen whether Spain will now follow suit.

If you have any questions concerning the Unitary Patent, please get in touch with your usual contact at Swindell & Pearson Ltd or Simon Foster at [email protected]. Simon is based at our head office in Derby.