Unitary Patent and Unified Patent Court – European Unitary Patent (UP) to go ahead despite BREXIT

The British Government recently announced its intention to ratify the Unitary Patent System. As a result, the new European Unitary Patent System may be up and running in late 2017 or early 2018. As part of the new system, the British Government will host the Unified Patent Court which will hear disputes relating to European Patents in the Pharmaceutical and Life Sciences field.

Present system

Currently, a European Patent is merely a “bundle” of National Patents granted following a single filing and examination before the European Patent Office (EPO). Once granted, the European Patent must be validated before each of the required national patent offices. This validation step involves meeting each of national requirements, including translations in many countries. This validation step adds significantly to the cost of the current process, particularly where protection in many of the European states is required. Annual renewal fees in each of the required countries must also be paid to maintain patent protection.

Unitary Patent

The Unitary Patent will have unitary effect for the entire territory of its member states. The Unified Patent Court (UPC) will be the exclusive tribunal for European Patents. The member states will include up to 25 of the 28 European States and a population of about 500 million.  Spain, Poland and Croatia have not signed up to the complete Unitary Patent system.

What are my options for protection in Europe?

The Unitary Patent will be an alternative to the present system rather than a replacement. It will also be possible to combine the new system with previous ones, allowing a unitary patent to coexist with National Patents in countries which are not member states of the Unitary Patent system. This will provide three options for obtaining patent protection in Europe which may be used as alternatives or in combination depending on the coverage. These options include:

  • Filing separate national patent applications in European states which independently undergo examination and grant.
  • Filing a European regional patent application and after grant electing national validation in your chosen countries in accordance with the current EPO procedures.
  • Filing a European regional patent application and after grant electing for the application to become a Unitary Patent.

A patent application for any of the options may be entitled to priority from an Australian priority patent application provided they are filed within 12 months of the Australian priority. Alternatively, each application may proceed as a national phase filing of an International (PCT) Application within 31 months of the earliest priority.  It should be noted, however, that some specific national applications, including France, can not proceed via an International (PCT) Application other than via a European Regional Application (option 2 or 3).

The options for filing in Europe from an Australian national or International Application are shown below.

The most cost effective option will depend on the number of countries in which you require protection. For more than approximately five countries, the Unitary Patent is likely to save money. Costs required at grant are likely to be less and the cost for renewal in up to 25 countries is likely to be about the cost of renewal in four national offices.

If you require protection in only a few countries, then validation of your granted European Patent or direct filing into national offices may be more cost effective. Certain countries, such as Spain and Turkey, may not be part of the Unitary Patent System. For these countries, national filing or national validation of granted European Patents will be the only option.

Litigation

Litigation of a Unitary Patent will occur exclusively in the Unitary Patent Court (UPC). Granted European Patents in force when the Unitary Patent system comes into effect will fall under the jurisdiction of the Unified Patent Court, unless the patentee decides to “opt out” so that proceedings would be conducted before a national court. Opting out will avoid a central revocation action being initiated before the UPC but would involve additional costs.  If the patent is unlikely to be litigated, opting out may not be warranted.

Will things change when the United Kingdom (UK) leaves the European Union (EU)?

The UK’s departure from the EU will not have any effect on the validity of pending or granted European patents validated in the UK.

The Unitary Patent is an intergovernmental treaty between the participating states and not enacted by the EU, thus the Unitary Patent System may be seen as not in conflict with negotiation following BREXIT.

However, there is still some uncertainty regarding the UK’s ongoing participation in the Unitary Patent system as the UPC recognises the ultimate supremacy of EU law as decided by the European Court of Justice.  It remains to be seen whether the UK will continue as part of the Unitary Patent System once it leaves the EU

For further information on the Unitary Patent and how this may affect your current and future filings, please contact Ray Evans at ray.evans@pof.com.au.

BSc(Hons) MSc FIPTA

Ray is the firm’s Chemistry and Life Sciences team coordinator. He has drafting experience in pharmaceuticals, drug delivery, polymers, agrochemicals, nanotechnology, mining chemicals and cosmetics.