Beginning in June 2023, companies will be able to protect their inventions in 17 EU countries as a Unitary Patent, a European patent with unitary effect. A Unified Patent Court will start to operate on the same day to resolve companies’ disputes over European patents in a centralised manner. “This is the most significant change in the field in Europe since 1977,” says Marjut Honkasalo, European Patent Attorney at Kolster.
The entry into force of the unitary patent system, which has been in the plans for decades, will revolutionise the European patent system on 1 June 2023. This is the most extensive change since the European Patent Convention entered into force in 1977.
The entry into force of the unitary patent system ultimately depended on Germany, which acted as a gatekeeper for the patent court. Germany ratified the Agreement on the Unified Patent Court on 17 February 2023.
The new system enables companies to protect their inventions with a regional Unitary Patent covering 17 EU countries. The reform does not exclude the protection of inventions in current ways.
“It’s time for companies to make choices,” says Marjut Honkasalo, Partner and European Patent Attorney at Kolster, a company specialising in IPR. “When the European Patent Office (EPO) grants a patent, it’s up to the company to choose between a Unitary Patent and separate country-specific European patents for the 17 EU countries. The patent grant can already be delayed so that the company can choose a Unitary Patent.”
The annual fee for the Unitary Patent covers all participating countries
For country-specific European patents, annual fees are paid to each country separately, whereas the Unitary Patent has one annual fee. The annual fee for the Unitary Patent corresponds to the current annual fees to be paid to Germany, France, Italy and the Netherlands.
“As a rule of thumb, if a company needs coverage for its patent in three countries belonging to the unitary patent system, the costs relating to annual fees will be lower for the Unitary Patent than the sum of costs of three country-specific annual fees,” says Krister Karlsson, European Patent Attorney at Kolster.
A court with jurisdiction in 17 countries
The new system also includes a Unified Patent Court (UPC). The UPC will automatically become a court for patent disputes over all European patents in the 17 EU countries, including national validations of European patents granted before the entry into force of the system, provided that they are not subject to a dispute before a national court.
If a company wants to choose a national court instead of the UPC, it can request its national validations of European patents and European patent applications to be opted out from the UPC. Unitary Patents cannot be opted out from the UPC. Opting out will be possible from 1 March 2023.
The decisions of the Unified Patent Court apply to all EU countries participating in the system, which is a major advantage. However, there is a risk that a single decision concerning a patent dispute can invalidate the patent in all of the 17 countries.
“Companies with national European patents need to be careful and consider whether they want any disputes to be resolved at a national court or the Unified Patent Court,” Honkasalo points out.
In addition to Germany, the unitary patent system covers Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. The remaining EU countries can join the system if they so choose.
Options for companies after 1 June 2023
- A Unitary Patent from the European Patent Office (EPO) to cover 17 EU countries. One annual fee.
- The 17 countries participating to the Unitary Patent system are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
- A country-specific European patent from the EPO involves an annual fee for each country separately.
- A country-specific European patent is always needed for the countries that are not part of the unitary patent system, such as Great Britain.
For further information, please contact:
Marjut Honkasalo, European Patent Attorney, Partner
Tel. +358 50 524 2413, firstname.lastname@example.org
Krister Karlsson, European Patent Attorney, Associate Partner
Tel. +358 44 236 5676, email@example.com