European Patent with Unitary Effect
- Filing a request for unitary effect of the European Patent
- Opt-out request from UPC
The purpose of the European patent with unitary effect is to enable activities in manufacturing and distributing products across national borders within EU. Uniform patent protection within the European Union market, or at least a significant part thereof, should feature amongst the legal instruments which undertakings have at their disposal. A European patent granted by the EPO should, at the request of the patent proprietor, benefit from unitary effect in the participating Member States. Such a patent is hereinafter referred to as a ‘European patent with unitary effect’.
Unitary Patent
Unitary patent protection should foster scientific and technological advances and the functioning of the internal market by making access to the patent system easier, less costly and legally secure. It should also improve the level of patent protection by making it possible to obtain uniform patent protection in the participating Member States and eliminate costs and complexity for undertakings throughout the Union.
European Patent Office proceding
The participating Member States entrusted certain administrative tasks relating to European patents with unitary effect to the EPO, in particular as regards the administration of requests for unitary effect, the registration of unitary effect and of any limitation, license, transfer, revocation, or lapse of European patents with unitary effect, the collection, and distribution of renewal fees, the publication of translations for information purposes during a transitional period and the administration of a compensation scheme for the reimbursement of translation costs incurred by applicants filing European patent applications in a language other than one of the official languages of the EPO. In the framework of the Select Committee, the participating Member States should ensure the governance and supervision of the activities related to the tasks entrusted to the EPO by the participating Member States, ensure that requests for unitary effect are filed with the EPO within one month of the date of publication of the mention of the grant in the European Patent Bulletin and ensure that such requests are submitted in the language of the proceedings before the EPO together with the translation prescribed, during a transitional period, by Regulation (EU) No 1260/2012.
The list of participating Member States
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Ital, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia, Sweden.
Unitary patent vs. European patent validation
The unitary patent protection is available to proprietors of a European patent from both the participating Member States and from other States, regardless of their nationality, residence or place of establishment. A European patent granted by the EPO should, at the request of the patent proprietor, benefit from unitary effect by virtue of this Regulation in the participating Member States. Such a patent is hereinafter referred to as a ‘European patent with unitary effect. The European patent means a patent granted by the European Patent Office (hereinafter ‘EPO’) under the rules and procedures laid down in the EPC. European patent with unitary effect means a European patent which benefits from unitary effect in the participating Member States by virtue of the Regulation No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection.
In the non-participating member states, such as the Czech Republic or Slovakia, the patent proprietor must still validate the European Patent.
European patent with unitary effect
A European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection.
According to Art. 3(1) Regulation No 1257/2012, The patent proprietor must be the proprietor of the European patent granted by the EPO under the rules and procedures laid down in the EPC. The second condition that the set of claims must be the same and for all the participating Member States. The third condition is the file a request for unitary effect. If all the above conditions are met, the patent proprietor can benefit from the unitary effect. A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect. A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States. The European Patent with the unitary effect may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States.
Effect of the Unitary patent
A European patent with unitary effect shall take effect in the participating Member States on the date of publication by the EPO of the mention of the grant of the European patent in the European Patent Bulletin. It may be licensed in respect of the whole or part of the territories of the participating Member States. The unitary effect of a European patent shall be deemed not to have arisen to the extent that the European patent has been revoked or limited.
Where the protection is conferred?
Unitary patent protection should be achieved by attributing unitary effect to European patents in the post-grant phase by virtue of the Regulation No 1257/2012 and in respect of all the participating Member States. The main feature of a European patent with unitary effect is its unitary character, i.e. providing uniform protection and having equal effect in all the participating Member States. Consequently, a European patent with unitary effect should only be limited, transferred or revoked, or lapse, in respect of all the participating Member States. The European patent with unitary effect can be licensed in respect of the whole or part of the territories of the participating Member States. Compulsory licences for European patents with unitary effect should be governed by the laws of the participating Member States as regards their respective territories. To ensure the uniform substantive scope of protection conferred by unitary patent protection, only European patents that have been granted for all the participating Member States with the same set of claims should benefit from unitary effect. Finally, the unitary effect attributed to a European patent should have an accessory nature and should be deemed not to have arisen to the extent that the basic European patent has been revoked or limited.
Uniform protection
The European patent with unitary effect should confer on its proprietor the right to prevent any third party from committing acts against which the patent provides protection. This should be ensured through the establishment of a Unified Patent Court. In matters not covered by the Regulation No 1257/2012 or by Regulation No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of unitary patent protection with regard to the applicable translation arrangements, the provisions of the EPC, the Agreement on a Unified Patent Court, including its provisions defining the scope of that right and its limitations, and national law, including rules of private international law, should apply.
Achieved patent rights
The European patent with unitary effect confers on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations. The scope of that right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect. In accordance with the general principles of patent law and Article 64(1) of the EPC, unitary patent protection should take effect retroactively in the participating Member States as from the date of publication of the mention of the grant of the European patent in the European Patent Bulletin. Where unitary patent protection takes effect, the participating Member States should ensure that the European patent is deemed not to have taken effect on their territory as a national patent, so as to avoid any duplication of patent protection. The acts against which the patent provides protection, and the applicable limitations shall be those defined by the law applied to European patents with unitary effect in the participating Member State whose national law is applicable to the European patent with unitary effect as an object of property. The regime applicable to damages should be governed by the laws of the participating Member States, in particular the provisions implementing Article 13 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (4).
Exclusion from protection
Rights conferred by a European patent with unitary effect shall not extend to acts concerning a product covered by that patent which are carried out within the participating Member States in which that patent has unitary effect after that product has been placed on the market in the Union by, or with the consent of, the patent proprietor, unless there are legitimate grounds for the patent proprietor to oppose further commercialization of the product. In accordance with the case-law of the Court of Justice of the European Union, the principle of the exhaustion of rights should also be applied to European patents with unitary effect. Therefore, rights conferred by a European patent with unitary effect should not extend to acts concerning the product covered by that patent which are carried out within the participating Member States after that product has been placed on the market in the Union by the patent proprietor.
A EUROPEAN PATENT WITH UNITARY EFFECT AS AN OBJECT OF PROPERTY
Treating a European patent with unitary effect as a national patent
As an object of property, a European patent with unitary effect should be dealt with in its entirety, and in all the participating Member States, as a national patent of the participating Member State determined in accordance with specific criteria such as the applicant’s residence, principal place of business or place of business.
A European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register:
a) the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or
b) where point (a) does not apply, the applicant had a place of business on the date of filing of the application for the European patent.
Licences of right
Where two or more persons are entered in the European Patent Register as joint applicants, point (a) of the paragraph above shall apply to the joint applicant indicated first. If this is not possible, point (a) of the paragraph above shall apply to the next joint applicant indicated in the order of entry. Point (a) of the paragraph above does not apply to any of the joint applicants, point (b) of the paragraph above shall apply accordingly. Where no applicant had his residence, principal place of business or place of business in a participating Member State in which that patent has unitary effect for the purposes of paragraphs 1 or 2, the European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the State where the European Patent Organization has its headquarters in accordance with Article 6(1) of the EPC, i.e. the German private law. The acquisition of a right may not be dependent on any entry in a national patent register.
In order to promote and facilitate the economic exploitation of an invention protected by a European patent with unitary effect, the proprietor of that patent is able to offer it to be licensed in return for appropriate consideration. To that end, the patent proprietor should be able to file a statement with the EPO that he is prepared to grant a license in return for appropriate consideration. In that case, the patent proprietor should benefit from a reduction of the renewal fees as from the EPO’s receipt of such statement.
The proprietor of a European patent with unitary effect may file a statement with the EPO to the effect that the proprietor is prepared to allow any person to use the invention as a licensee in return for appropriate consideration. A licence obtained under this Regulation shall be treated as a contractual licence.
FINANCIAL PROVISIONS and RENEWALS
Principle on expenses
Patent proprietors should pay a single annual renewal fee for a European patent with unitary effect. Renewal fees should be progressive throughout the term of the patent protection and, together with the fees to be paid to the European Patent Organisation during the pre-grant stage, should cover all costs associated with the grant of the European patent and the administration of the unitary patent protection.
Renewal fees should be paid to the European Patent Organisation. The EPO should retain an amount to cover the expenses generated at the EPO in carrying out tasks in relation to the unitary patent protection in accordance with Article 146 of the EPC.
Renewal fees
Renewal fees for European patents with unitary effect and additional fees for their late payment shall be paid to the European Patent Organisation by the patent proprietor. Those fees shall be due in respect of the years following the year in which the mention of the grant of the European patent which benefits from unitary effect is published in the European Patent Bulletin. A European patent with unitary effect shall lapse if a renewal fee and, where applicable, any additional fee have not been paid in due time. Renewal fees which fall due after receipt of the statement for offering license shall be reduced. Renewal fees for European patents with unitary effect are as follows:
Year
Unitary Patent (EUR)
2
35
3
105
4
145
5
315
6
475
7
630
8
815
9
990
10
1 175
11
1 460
12
1 775
13
2 105
14
2 455
15
2 830
16
3 240
17
3 640
18
4 055
19
4 455
20
4 855
Translation arrangements for the European patent with unitary effect
Where the specification of a European patent, which benefits from unitary effect has been published in accordance with Article 14(6) of the EPC, no further translations shall be required. A request for unitary effect as referred to in Article 9 of Regulation (EU) No 1257/2012 shall be submitted in the language of the proceedings. The language of the proceedings means the language used in the proceedings before the EPO as defined in Article 14(3) EPC.
During a transitional period starting on the date of application of this Regulation a request for unitary effect as referred to in Article 9 of Regulation (EU) No 1257/2012 shall be submitted together with the following:
- where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or
- where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the Union.
EPO will publish the translations as soon as possible after the date of the submission of a request for unitary effect. The text of such translations shall have no legal effect and shall be for information purposes only.
EPO should provide administering a compensation scheme for the reimbursement of all translation costs up to a ceiling, for applicants filing patent applications at the EPO in one of the official languages of the Union that is not an official language of the EPO.
Translation in the event of a dispute
In the event of a dispute concerning a European patent with unitary effect, it is a legitimate requirement that the patent proprietor at the request of the alleged infringer should provide a full translation of the patent into an official language of either the participating Member State in which the alleged infringement took place or the Member State in which the alleged infringer is domiciled. The patent proprietor should also be required to provide, at the request of a court competent in the participating Member States for disputes concerning the European patent with unitary effect, a full translation of the patent into the language used in the proceedings of that court. Such translations should not be carried out by automated means and should be provided at the expense of the patent proprietor. In the event of a dispute concerning a claim for damages, the court hearing the dispute should take into consideration the fact that, before having been provided with a translation in his own language, the alleged infringer may have acted in good faith and may have not known or had reasonable grounds to know that he was infringing the patent. The competent court should assess the circumstances of the individual case and, inter alia, should take into account whether the alleged infringer is a SME operating only at local level, the language of the proceedings before the EPO and, during the transitional period, the translation submitted together with the request for unitary effect.
Language
In the event of a dispute relating to an alleged infringement of a European patent with unitary effect, the patent proprietor shall provide at the request and the choice of an alleged infringer, a full translation of the European patent with unitary effect into an official language of either the participating Member State in which the alleged infringement took place or the Member State in which the alleged infringer is domiciled. In the event of a dispute relating to a European patent with unitary effect, the patent proprietor shall provide in the course of legal proceedings, at the request of a court competent in the participating Member States for disputes concerning European patents with unitary effect, a full translation of the patent into the language used in the proceedings of that court. The cost of the translations shall be borne by the patent proprietor. In the event of a dispute concerning a claim for damages, the court hearing the dispute shall assess and take into consideration, in particular where the alleged infringer is a SME, a natural person or a non-profit organisation, a university or a public research organisation, whether the alleged infringer acted without knowing or without reasonable grounds for knowing, that he was infringing the European patent with unitary effect before having been provided with the translation.