(Most of) Europe Welcomes the Unitary Patent System

Written by: Christopher B. Jacobs, Partner

After years of anticipation, the UPC Agreement has finally been ratified by the necessary countries and the new Unified Patent Court and Unitary Patent (UP) system will enter into effect in June 2023.  The Unitary Patent system will provide a central legal system for patent rights across the majority of the countries in the European Union. This should simplify and reduce costs of maintaining and enforcing patents in Europe, but at the same time make it easier to challenge patents across all participating countries in a single action. 

You will now have two decisions to make for patents granted by the European Patent Office (EPO).

The first decision is related to validation of the European Patent in the countries where you want to have patent protection. The same process of validating the patent in select countries will continue, but you will now have an option to “validate” the patent in most of the European Union countries at once as a single Unitary Patent (sometimes referred to simply as the “UP”) and pay a single annuity fee to maintain the Unitary Patent.

The second decision is related to enforcement of the European Patent in a new Europe-wide court system, the Unified Patent Court (sometimes referred to simply as the “UPC”). This system will allow you to challenge infringers’ actions in all of the signatory countries at once, but also risks cancelation of the patent in all of those European countries in a single action in a single court.

Can You Opt Out of the Unitary Patent Court (UPC) System

For at least the next seven years, you will be able to opt out of the UPC and continue to enforce your patent in a country-by-country basis, just as you do now. That also will allow you to “drop” selected countries to reduce annuity fees in the later years of a European Patent’s term.  Existing European Patents will automatically be under the jurisdiction of the UPC during this seven-year period unless either the patent has already been the subject of a court action in a validation country or the patent owner affirmatively opts out during a three-month grace period before the UPC fully enters into effect. If you have an existing European patent, you should act now if you want to opt out.

There are some complicating factors, however, in that not all of the members of the European Patent Convention (the treaty that created the EPO) are members of the European Union.  The UK is the most obvious example, and if you want patent protection in the UK you will still need to validate your European Patent in the UK, whether you elect a UP or not.  Other non-European Union countries that are part of the European Patent Convention but not part of the European Union include  Norway, Turkey, and Switzerland. Additionally, not every European Union country has ratified the UPC Agreement.  Poland and Spain are two large European countries that are eligible to join as members of the European Union, but for now remain outside the UP system.  For a complete list of European countries in and out of the UPC Agreement, or for further guidance on the best strategy for your situation, please contact us at Renner Otto. For a complete list of European countries in and out of the UPC Agreement click here.

Why Renner Otto?

At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. Our attorneys are knowledgeable on a wide range of domestic and international IP issues, and we partner with Firms around the world to better serve our clients. Someone from the Renner Otto team would be happy to discuss this topic or any related Intellectual Property matters. Contact us for a complimentary consultation to see how we can help your business move your innovation forward.

The attorneys at Renner Otto strive to be authorities in all matters concerning the ever-evolving landscape of Intellectual Property; however, the information provided on our website is not intended to be legal advice, nor does it create an attorney-client relationship.