On June1, 2023, the European Unitary Patent (BU) and the Unified Patent Jurisdiction (JUB) will come into force. These new elements bring a major change to patenting in Europe, but what impact will they have on your current or future patents? Here are a few key points to remember about the Unitary Patent and the JUB.
What is the European Unitary Patent?
The Unitary Patent enables a single title to be obtained (rather than several titles per country) for the 17 members of the European Union (EU) and the European Patent Office (EPO) who have ratified the agreement. Today, the countries concerned are :
- Germany,
- Austria,
- Belgium,
- Bulgaria,
- Denmark,
- Estonia,
- Finland,
- France,
- Italy,
- Latvia,
- Lithuania,
- Luxembourg,
- Malta,
- Netherlands,
- Portugal,
- Slovenia
- Sweden
These countries will soon be joined by 8 others: Cyprus, Greece, Poland, Hungary, Czech Republic, Romania, Slovakia and Ireland.
This is not a new type of patent, but simply a way of bypassing the current system of national validations after a European application has been issued.
This unitary patent will only be available for European patents granted after June 1, 2023. Should your patent applications be granted between January 1 and June 1, 2023, two transitional measures will allow you to postpone your grant until June 2023, in order to benefit from this unitary patent.
First transitional measure: you will be able to request a postponement of the decision to grant your European application until June1, 2023, i.e. when the unitary patent is launched. This request can be made as early as January1, 2023.
Second transitional measure: you will be able to apply for unitary effect in advance for applications due to be issued on or after January1, 2023.
Recourse to the unitary patent is not compulsory, and it remains possible to opt for the old system. Under this system, each country in which a patent is to be extended must validate it independently. This old system of European validation will be necessary for countries that are not signatories to the Unitary Patent and JUB Agreement (outside the EU: UK, Switzerland, Turkey… / non-signatories: Spain, Poland…).
What are the benefits?
The unitary patent system reduces procedural costs for all validated countries. After a transitional period of 6 years, translations will no longer be required. During this transitional period, however, a full translation into English or French will be required.
As far as annual fees are concerned, the annual amount for these 17 countries is equivalent to the annual fees for 4 countries under the old system of national validations. And fees for 10 years of protection are less than 5,000 euros.
Explanations of the Unified Patent Jurisdiction or UPJ
The Unified Patent Jurisdiction or UPL is a new European Court of Justice dedicated to patents. It will have jurisdiction over disputes relating to unitary patents. But not only that… it will also be able to hear disputes relating to non-unitary European patents, even those granted before its entry into force in June 2023.
– Unitary patents
In the case of unitary patents, the advantage is that you can enforce the rights associated with your title, in an infringement action for example. This can be done in 17 countries before a single court, in one go, with a single law firm!
On the other hand, this unitary patent can be invalidated at once before the JUB, and thus in all the countries that have ratified the agreement. It will therefore be easier for a third party to invalidate a unitary patent, since it will be able to do so for all these countries at the same time.
– The opt-out
A transitional period of 7 years (renewable once) allows the jurisdiction of the Unified Patent Jurisdiction to be waived. This allows the jurisdiction of national courts (German court, Italian court, etc.) to be restored for European patents whose unitary effect has not been requested (whether or not they have already been granted).
This derogation from the Unified Patent Jurisdiction, or “opt-out”, must be expressly requested from the JUB as of March 1, 2023. Delaying this decision means running the risk of a competitor bringing an action for invalidation of your patent before the Unified Patent Jurisdiction. You will no longer be able to take these disputes to national courts. And potentially lose your patent in all Unified Patent Jurisdiction countries at once.
In the case of an opt-out, the possibility of reintroducing the jurisdiction of the Unified Patent Jurisdiction remains open. This is known as the “opt-in”, and reintroducing the jurisdiction of the Unified Patent Jurisdiction becomes irreversible.
The choices associated with the unitary patent and the JUB’s jurisdiction with the opt-out can have a major impact on the exploitation and life of your patent, and should not be taken lightly.
Don’t hesitate to get in touch with your CPI to discuss these issues and define the strategy best suited to your objectives.
