European Patent and the Unitary Patent

The European Patent and the Unitary Patent (or European Patent with Unitary Effect) are two central mechanisms for protecting inventions across Europe. They provide alternatives to national patent systems, allowing inventors to secure protection in multiple countries efficiently. This guide explains their requirements, procedures, timelines, associated challenges, and the strategic role of patent attorneys.

1. The European Patent

Definition

A European Patent is a bundle of national patents granted by the European Patent Office (EPO) under the European Patent Convention (EPC). It allows applicants to seek protection in up to 39 contracting states through a single application.

Requirements

1. Novelty (Art. 54 EPC):
• The invention must not form part of the state of the art.
2. Inventive Step (Art. 56 EPC):
• The invention must not be obvious to a person skilled in the art.
3. Industrial Applicability (Art. 57 EPC):
• The invention must be capable of being manufactured or used in industry.
4. Exclusions (Art. 52(2) EPC):
• Certain subject matters, like mathematical methods or business methods "as such," are excluded unless tied to a technical problem.

Application Procedure

Filing (Art. 75 EPC):

• Applicants file at the EPO or via a national office.
• Requires a description, claims, drawings, and an abstract.

Formal Examination (Art. 90 EPC):

• Checks compliance with filing requirements.

Search Report (Art. 92 EPC):

• The EPO conducts a prior art search and provides a written opinion on patentability.

Substantive Examination (Art. 94 EPC):

• The EPO examines novelty, inventive step, and industrial applicability.

Publication (Art. 93 EPC):

• The application is published after 18 months from the filing or priority date.

Grant (Art. 97 EPC):

• If the application meets all requirements, the EPO grants the patent.

Post-Grant Process

1. Validation:
• The European Patent must be validated in each designated state to take effect. This may involve translation and fees.
2. Opposition (Art. 99 EPC):
• Third parties can oppose the patent within nine months of grant.
3. Appeals (Art. 106 EPC):
• Decisions of the EPO can be appealed to the EPO Boards of Appeal.

Duration and Costs

• Duration: 20 years from the filing date (renewable annually).
• Costs:
• Filing fees: ~€4,000–6,000.
• Translation and validation costs vary by country.

Case Example

• EPO Decision T 0641/00 ("Two Identities/COMVIK"):
• Clarified that features contributing to the technical character of an invention must be considered for the inventive step.

2. The Unitary Patent

Definition

The Unitary Patent provides uniform protection across participating EU Member States via a single registration. It eliminates the need for national validation and reduces costs.

Legal Basis

• Regulation (EU) No. 1257/2012: Establishes the Unitary Patent.
• Regulation (EU) No. 1260/2012: Governs language requirements.
• Unified Patent Court Agreement (UPCA): Creates a centralized court for disputes.

Requirements

• A European Patent must first be granted by the EPO under the EPC.
• Within one month of grant, the applicant can request unitary effect.

Advantages

1. Simplification:
• Single procedure for registration and renewal.
2. Cost Savings:
• No need for national validations or multiple renewal fees.
3. Uniform Protection:
• Covers all participating Member States (currently 17, with potential for expansion).

Challenges

1. Limited Geographic Scope:
• Non-EU countries (e.g., Switzerland, UK) and some EU members (e.g., Spain, Croatia) do not participate.
2. Irrevocable Unitary Effect:
• Once unitary effect is requested, the patent cannot be converted into separate national patents.

Unified Patent Court (UPC)

1. Structure:
• Composed of a Court of First Instance (local, regional, and central divisions) and a Court of Appeal in Luxembourg.
2. Jurisdiction:
• Handles infringement and validity cases for Unitary Patents and traditional European Patents (unless opted out).
3. Opt-Out Mechanism:
• European Patents can be opted out of UPC jurisdiction during a transitional period of seven years.

Case Example

• UPC Preparatory Work – Opt-Out Strategies:
• Firms have advised clients to opt out high-value European Patents to avoid centralized invalidation risks.

3. Procedural Timelines

Step	European Patent	Unitary Patent
Filing to Grant	3–5 years	After European Patent grant
Opposition Period	9 months post-grant	N/A
Unitary Effect Registration	N/A	Within 1 month of grant

4. Strategic Considerations

Combination of Systems:

• Use the European Patent to protect non-EU and non-participating EU countries while leveraging the Unitary Patent for participating states.

Cost Management:

• Opt for the Unitary Patent to reduce validation and translation expenses.

Litigation Strategy:

• Evaluate whether to opt out from the UPC for important patents to avoid centralized invalidation risks.

Portfolio Optimization:

• Segment patents into high-value and low-value groups to decide between national, European, and Unitary Patents.

5. Role of a Patent Law Firm

A law and patent firm provides essential services for navigating both systems:

Filing and Prosecution:

• Drafting applications to meet EPC standards.
• Advising on strategies for requesting unitary effect.

Validation and Renewals:

• Managing translations, fees, and procedural requirements for European Patents.

Oppositions and Appeals:

• Representing clients in EPO opposition proceedings or UPC litigation.

Strategic Counseling:

• Advising on cost-effective filing and litigation strategies.

Litigation:

• Handling infringement and validity disputes before national courts and the UPC.

Conclusion

The European Patent and Unitary Patent systems offer complementary tools for protecting inventions in Europe. While the European Patent provides flexibility and wide coverage, the Unitary Patent simplifies protection within the EU. By understanding these systems and leveraging strategic advice from a skilled patent law firm, inventors and companies can maximize the value of their innovations while navigating complex legal landscapes.