Unitary Patent (European Patent with unitary effect)
The Unitary Patent, officially referred to as the ‘European Patent with unitary effect’, is a legally significant intellectual property right within the European patent system. The Unitary Patent allows for uniform patent protection in several EU Member States based on a central grant by the European Patent Office (EPO). It is regarded as one of the most important reforms in European patent law and aims to reduce the existing fragmentation, as well as the costs and complexity, associated with the enforcement of technological inventions.
Historical Background and Objective
Development of the European Patent System
Since the European Patent Convention (EPC) entered into force in 1977, the European patent system has enabled the central filing and examination of European patents. However, this system previously required a national validation in the individual contracting states after the central grant, resulting in a bundle of independent national patents. This led to multiple formalities, translation requirements, separate fees, and increased legal uncertainty in the event of infringement disputes.
Introduction of the Unitary Patent
With Regulation (EU) No. 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection and Regulation (EU) No. 1260/2012 concerning translation arrangements, the Unitary Patent was established. The implementation of the Unitary Patent began on 1 June 2023, alongside the establishment of the Unified Patent Court (UPC).
Legal Framework of the Unitary Patent
European Union and Enhanced Cooperation
Not all EU Member States participate in the Unitary Patent system. The system is based on the ‘enhanced cooperation’ mechanism under Art. 326 ff. TFEU. Currently, 17 EU Member States (as of June 2024) are contracting parties to the Unitary Patent. The European Patent Office, as an organ of the European Patent Organisation, remains responsible for granting patents.
Legal Basis
- Regulation (EU) 1257/2012: Creation of Unitary Patent Protection
- Regulation (EU) 1260/2012: Translation arrangements
- Agreement on a Unified Patent Court (UPCA/EPGÜ): Jurisdiction for Unitary Patents
- European Patent Convention (EPC): Basis for the granting of patents
Scope of Protection and Effect of the Unitary Patent
Unitary Effect
The Unitary Patent grants the patent owner a uniform, directly effective patent protection in all participating Member States starting from the registration of the unitary effect. It is not a new patent, but rather the extension of a European patent granted by the EPO with unitary effect for all participating states.
No Principle of Partial Invalidity
The unitary effect means that limitations or invalidations affect the entire Unitary Patent for all participating states and, unlike the traditional bundle patent, are not limited to individual national territories.
Application and Procedure
Application Procedure
After granting of a European patent, an application for unitary effect can be filed at the EPO within one month. Unitary effect can only be requested for the states participating in the Unitary Patent system at the time of patent grant.
Translation Requirements
During a transitional period, a full translation of the patent into another official language of the EU must be submitted together with the application, provided the patent was not already drafted in German, English, or French. After the transitional period, this obligation no longer applies.
Fees
With the application for unitary effect, annual fees are payable directly to the EPO. National fees of individual participating states are not applicable.
Legal Effects of the Unitary Patent
Exclusive Rights and Prohibitions
Patent holders have the exclusive right to prohibit third parties from manufacturing, using, offering, or placing the patented invention on the market in the territory of all participating states.
Revocation and Limitation
Actions for revocation against the Unitary Patent can be brought centrally before the Unified Patent Court. The decision is effective equally for all participating states.
Transfer and Licensing
The Unitary Patent is transferable and may be licensed in whole or for parts of its territorial scope. Licenses can be exclusive or non-exclusive.
Compulsory Licenses
National rules on compulsory licensing remain applicable. However, these are extended to the entire unitary territory.
Relationship to National Patents and Conventional European Patents
Coexistence of Several IP Rights
Alongside the Unitary Patent, it is still possible to apply for national patents or the traditional European bundle patent. However, the same invention cannot be protected simultaneously by a Unitary Patent and a national patent in the same state (ban on double protection).
Opt-out Provision (Transitional Arrangement)
Until 2030 (extendable), a transitional arrangement exists under which holders of classic European patents and patent applications can decide whether to exclude their patent from the future jurisdiction of the Unified Patent Court (‘opt-out’). There is no opt-out possibility for Unitary Patents; they are mandatorily subject to the jurisdiction of this court.
Unified Patent Court (UPC) and Dispute Resolution
Jurisdiction
The Unified Patent Court is responsible for infringement and validity proceedings concerning Unitary Patents. It is a supranational court with central divisions as well as local and regional divisions in the participating states.
Harmonisation of Enforcement
By means of centralised jurisdiction, divergent national case law is to be avoided and the enforcement of patent rights within the participating states made more efficient and legally certain.
Advantages and Challenges
Advantages of the Unitary Patent
- Unitary protection in multiple states through a single patent
- Reduced translation requirements and simplification of proceedings
- Uniform fee structure
- Centralised legal enforcement and validity control
Challenges and Criticisms
- Limited territorial scope due to lack of participation of all EU Member States
- Potentially high annual fees compared to individual national applications where protection needs are low
- Legal uncertainties in the initial phase regarding judicial practice
- Translation requirements during the transitional period as a cost factor
Conclusion and Outlook
The Unitary Patent (European Patent with unitary effect) constitutes a milestone in the harmonisation and enhancement of efficiency in European patent protection. By consolidating key protection mechanisms within a supranational framework and linking it to the Unified Patent Court, more uniform standards and greater legal certainty are expected in the internal market of participating states in the long term. The ongoing development and possible extension to further EU Member States remain of great practical and legal importance at the European level.
Further Legal Sources
- Regulation (EU) No. 1257/2012
- Regulation (EU) No. 1260/2012
- Agreement on a Unified Patent Court (UPCA)
- European Patent Convention (EPC)
- European Patent Office (EPO) – Official information on the Unitary Patent
Frequently Asked Questions
What are the legal effects of the Unitary Patent in the participating EU Member States?
The European Patent with unitary effect (Unitary Patent) has uniform and direct effect in all participating EU Member States that have ratified the Agreement on a Unified Patent Court and the Regulation establishing the unitary patent system. The legal effects relate to the scope of protection as well as to the limiting or revoking measures, which become effective either in the entire territory or not at all. This means that any limitation, revocation, or invalidation of the patent always covers the whole respective territory, without the possibility to maintain or lose the patent only in selected participating states. Infringements are assessed and judged uniformly. Claims for injunction, information, and damages are likewise based on uniform standards and can be enforced simultaneously in all participating countries.
How is the legal recourse for disputes concerning the Unitary Patent regulated?
Exclusive jurisdiction for civil law disputes arising from Unitary Patents – in particular infringement, invalidity, and licensing disputes – lies with the Unified Patent Court (UPC). The UPC consists of central, local, and regional divisions and has been designed as a supranational court system to ensure consistent jurisdiction and legal certainty. National courts are generally not responsible for disputes concerning a Unitary Patent, except for aspects outside substantive patent law (such as contractual disputes that are not directly related to patent law). UPC judgments apply directly in all participating states, creating a uniform legal enforcement mechanism.
What legal requirements apply to the licensing of a Unitary Patent?
Unitary Patents can be licensed as a whole, with the license equally applying to the entire territory of the participating Member States. Partial licenses – for example, limited to certain Member States – are not provided for. The licence agreement is generally subject to the general civil law provisions of the applicable contract law, but is subject to the statutory provisions governing the Unitary Patent insofar as licensing does not affect the territorial or substantive unity. Each licensee must ensure that use is in accordance with the provisions of the Unitary Patent and its scope of protection. Whether a licence is exclusive or non-exclusive depends on what is contractually agreed between the parties.
What is the significance of the Unitary Patent for existing national patents?
The Unitary Patent does not affect the validity or effect of national patents in Member States. National patents continue to exist independently. However, the Unitary Patent does affect the so-called “classical” European bundle patent in that holders may opt out of the jurisdiction of the UPC for already granted European patents or patent applications by way of an opt-out declaration. If no opt-out is declared, such IP rights are also subject to the uniform, supranational legal regime. New application for the Unitary Patent or claiming of unitary effect may reduce the strategic importance of national IP rights, particularly with respect to the enforcement and defence of patent rights.
What is the legal position regarding translation requirements for the Unitary Patent?
The translation requirements for the Unitary Patent are clearly regulated within the framework of the regulation implementing unitary patent protection. During the application and examination phase, the conventional European patent system applies (filing dependent on official languages). After grant, a complete translation of the patent specification into any official language of the EU is sufficient, if the Unitary Patent was not already issued in English. For the validity of protection or in case of legal disputes, it may be necessary to provide translations upon request, which then have corresponding probative value. Incorrect or misleading translations may, under certain circumstances, result in the loss of rights or liability.
Are there liability rules regarding the content of incorrect translations for the Unitary Patent?
Yes, according to Art. 4 of Regulation (EU) No. 1260/2012 on translation arrangements, the proprietor of the Unitary Patent is liable for damages caused by erroneous translations of the patent specification. This means that third parties who, in good faith, rely on a faulty translation and thereby suffer loss may assert claims against the patent owner. This is particularly significant in the context of enforcing patent rights and avoiding infringements, as it strengthens the protection of trust in the accuracy of official translations.
How is the material scope of protection of a Unitary Patent legally defined?
The scope of protection of the Unitary Patent is determined – just as for classical European patents – in accordance with the Protocol on the Interpretation of Article 69 of the European Patent Convention (EPC). The so-called scope of the wording of the claims applies, interpreted in light of the patent specification, drawings, and description. Unitary Patents are protected against all forms of unauthorised use throughout the entire territory of unitary effect, which includes manufacture, offer, sale, use, import, or storage. The unity of this protection prohibits the exclusion of individual states from the territorial scope or the assertion of different extents of protection for these.
What requirements and deadlines must be observed for revocation or invalidation of a Unitary Patent?
An action for invalidity against a Unitary Patent must be filed exclusively with the Unified Patent Court (UPC). The invalidity action may be based on lack of patentability, insufficient disclosure, or extension of the subject matter beyond the content of the application. Deadlines and procedural rules are governed by the Rules of Procedure of the UPC. If the invalidity challenge is successful in whole or in part, the invalidation always has erga omnes effect within all participating Member States and cannot be limited to individual countries. Decisions on revocation or limitation thus have immediate and unitary effect in the entire legal territory of the Unitary Patent.
