Changes in European Patent Law May Save You Money | Dunlap Bennett & Ludwig PLLC

Anarba Groub

Patent protection in the European Union (EU) is expensive. An applicant may file a patent application in an individual country, but it is generally more efficient to file through the European Patent Office (EPO) when the applicant wants patent protection in multiple EU countries. The applicant must pay annual renewal fees starting the third year from filing even if the application has not yet been examined. The EPO issues an Intention to Grant after examination, once the application is considered allowable. The specification may have to be revised to conform to the allowed claims. The claims must also be translated into French and German. Once the application is granted, the applicant must select up to 38 selected European countries (i.e., Member States) in which to validate the patent. Additional fees are required for each Member State and each validated Member State requires annual maintenance fees.

What’s New?

A new European Unitary Patent system will begin in early 2023. The applicant may request a Unitary Patent once the EPO grants the application instead of validating the patent in each individual Member State. A Unitary Patent provides uniform patent protection in up to 25 EU Member States, the total number of states currently cooperating in development of the system. 

The new system also establishes a new Unitary Patent Court that will have exclusive jurisdiction over Unitary Patent infringement and validation. For the first 7-year transition period, a patent owner may opt out of this jurisdiction, allowing the patent owner to rely on national courts instead, depending on litigation strategy. The transition period may be extended by 7 years.

Why Would I Want a Unitary Patent?

The Unitary Patent offers several advantages. It can be much cheaper and simpler to pay one centralized annual renewal fee than paying separate maintenance fees under the current system. Unitary Patent Infringement law has been harmonized across the Member States, simplifying enforcement. And after a six-year transitional period, translations will no longer be necessary if the application is filed in English, French, or German. 

Is There a Reason Not to Use the New System?

The Unitary Patent also simplifies invalidation procedures. The Unitary Patent system allows invalidation anytime over the lifetime of the patent. If a Unitary Patent is invalidated, the patent owner loses all rights to the patent at once. An applicant may wish to avoid obtaining Unitary Patents because after a nine-month opposition period, current practice forces the opponent to attack the patent individually in each validated Member State. The increased litigation costs may dissuade opponents. Moreover, patent owners may retain patent rights in some Member States under the existing EPO system even if the rights are lost in another Member State. 

In some cases, the Unitary Patent may not result in significant savings. This should factor into the decision of whether to request a Unitary Patent. For example, if the patent owner only wishes to validate the application in the UK, Spain, and Germany, a Unitary Patent would not add much benefit. The United Kingdom (UK) and Spain are among the countries not participating in the new Unitary Patent system. Moreover, some countries have not yet ratified the agreement, including Ireland and Greece. 

How Can I Get a Unitary Patent?

To obtain a Unitary Patent, the applicant must request the UP within one month of publication of the Decision to Grant in the European Patent Bulletin. This deadline is not extendable. The request may be made online using Form UP 7000, available at https://www.epo.org/applying/online-services/online-filing.html

If a currently pending European Patent application receives an Intention to Grant communication prior to the start of the Unitary Patent system, the applicant may request a delay of the Decision to Grant. The request must be made after an Intention to Grant communication has been issued and before the applicant has approved the text of the application for grant. The request may be made via Form 2025. The form will likely be available about the beginning of 2023. 

For further information, please refer to https://www.epo.org/applying/european/unitary/unitary-patent.html

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