A spectre is haunting Europe – the spectre of… the Unitary Patent. With Germany having deposited its ratification document on 17 February 2023, this spectre is finally coming to life: the European Patent with Unitary Effect ("Unitary Patent") and the Unified Patent Court ("UPC") system will enter their preparatory phase. The actual launch date (the date as of which Unitary Patents will be in effect and actions can be filed with the UPC) is set for 1 June 2023.
Under the new system it will be possible to obtain unitary effect for European Patents throughout numerous EU Member States and to enforce them across national borders in a single procedure. These Unitary Patents are somehow comparable to EU Trademarks and Community Designs, which also have unitary effect and already have been established for decades. But the new Unitary Patent is also a further development of the European Patent system, i.e. the established system through which patent protection can already be obtained in many states in the EU and beyond.
Differences to the "classic" European Patent
The established European Patent is essentially an application tool, allowing central examination and opposition procedures at the European Patent Office. As of grant, however, it establishes independent national patent rights in each of the states designated by the applicant. These national patents must then be enforced before the national courts and challenged before the national courts or patent offices. In contrast, the new Unitary Patent creates a unitary effect in all participating Member States. With a single application, patent protection can thus be obtained efficiently in initially 17 (and later up to 25) EU Member States. This is not only interesting for established technology players with large patent portfolios, but also for start-ups. The granting procedure is based on the European Patent Convention and therefore follows the usual pattern known from the European Patent system. In the new system, once a European Patent has been granted, the applicant can file a request for unitary effect in all participating EU Member States; additional protection in other member states of the European Patent Convention is still possible. This patent can then be enforced in all participating Member States in one single procedure, but it can also be challenged via a centralised cancellation procedure.
Not all EU Member States are in (yet)
Spain did not want to participate in this system (which was initially designed as an EU instrument) – and even opposed it. In addition, Croatia was not yet an EU member at the time the agreement was concluded; a decision on possible accession is still pending there. Since the system is only open to EU Member States, the number of participating states was further reduced to 25 due to Brexit. Ultimately, the remaining Member States pushed the project forward and agreed on the UPC Agreement. This is a treaty under international law that must be signed and ratified by all participating states before it can take effect in the respective state. So far, 17 out of the 25 participating EU Member States have ratified it, including Austria.
Patent enforcement under the new system
The concept of a unified jurisdiction through the newly created UPC is remarkable. Under the already established system of EU trademark law, national courts in the EU Member States act as EU trademark courts. Thus, in Austria, an action for infringement of an EU Trademark (with unitary effect) must be filed with national courts acting as EU Trademark Courts but applying national procedural law. Contrary to this, actions arising from or against unitary patents are to be brought before the UPC, which is a separate court established by an international agreement that applies uniform procedural law and its own rules of procedure, and whose judges are subject to a separate appointment process. The decisions of this court are then enforceable like decisions of national courts in all EU Member States and beyond.
The UPC is structured as one single court. However, it is divided into different chambers established at different locations. There will be a central chamber in Paris with a branch office in Munich (discussions about establishing a second branch, perhaps in Milan, are still ongoing after the second branch planned in London fell victim to Brexit). The central chamber is primarily responsible for nullity actions against granted patents. Infringement proceedings, on the other hand, would generally have to be brought before regional or local chambers distributed throughout the participating states, one of which will be set up in Vienna and another one in Ljubljana, for example. The Court of Appeals, which is responsible for appeals from all chambers, has its seat in Luxembourg.
In any case, the UPC will be competent to hear cases based on or against the new Unitary Patents. In addition, it will also have jurisdiction by default for actions arising from and against European Patents without unitary effect which are protected in the participating Member States ("classic" European Patents). However, the owners of these patents can opt out of the UPC's jurisdiction for an initial period of seven years, for example for tactical reasons, in order to avoid the patent portfolio being centrally contestable or to wait and see how the new court system unfolds. Applications can be filed during the three-month "sunrise phase" to begin on 1 March 2023. A later "opting in" is possible in principle, but only if no proceedings relating to the specific patents are pending. Patent owners should therefore consider whether a quick "opting out" could indeed bring strategic advantages.
By Michael Woller, Partner, Schoenherr