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Tuesday, December 18, 2012

Patent breakthrough! The new EU Unitary Patent

By Chris Bird, Partner

After 30 years of wrangling, many false starts and a fair degree of compromise, on 11 December 2012 the European Parliament and Council finally approved proposals for the Unitary Patent, including a language regime and a Unified Patent Court. It is expected that applications for a Unitary Patent will open on 1 January 2014, with the first Unitary Patents possibly issuing as early as April 2014.

New structure

The Unitary Patent is similar to the current Community Trade Mark. It is a single EU patent granted by the European Patent Office, which will have effect throughout all Member States, unlike the current European Patent which only takes effect as a bundle of national patents in the countries in which a patent has been validated, which therefore need to be enforced (and challenged) separately in each country. The aims of the new system are firstly to reduce costs, both of patenting and litigation, and secondly to improve legal certainty for industry, side-stepping the divergence that can result from parallel litigation of the same patent claims in different countries.

The Unitary Patent system will not change the rules on patentability, but will simply provide a new mechanism for gaining protection in Europe to operate in addition to the current options (separate national patents, or a European Patent).

The Unified Patent Court (UPC) will be a single court system to deal with infringement and validity disputes relating Unitary Patents and European Patents. The Central Division of the UPC will be located in Paris, with divisions of the Central Court in London (dealing with patents in the areas of pharmaceuticals, biotech, chemistry and metallurgy), and Munich (dealing with patents in the areas of mechanical engineering, lighting and heating). 

An inventor or applicant will be able to apply to the EPO for a Unitary Patent providing protection in all 25 EU member states.  Like a European Patent application, the Unitary Patent application must be filed in an 'official language', namely English, German or French, or in another member state language provided a translation into one of the official languages is provided within a set period. The rules include a compensation scheme for translation costs so that translation costs can be reimbursed to SMEs, non-profit organisations and universities which file a patent application in an unofficial language.

Lower costs

Currently, a European Patent providing protection in the 27 EU Member States can cost up to around €40,000, including up to around €25,000 in translation fees alone. According to the European Commission, the new Unitary Patent will cost between around €5000 and €6500. 

Renewal fees account for a large part of the total cost of having a European Patent, as renewals must be effected in each country where the patent is in force. Although the renewal fee system for Unitary Patents has not yet been announced, it will be set at a level that takes account of the special needs of small firms.

The only hurdle which remains is a challenge by Italy and Spain regarding the process, which could mean that these countries are left out of the new system - at least for now.

We will provide updates as further details are released, in particular with regard to the advantages and disadvantages of the new Unitary Patent compared with the current European Patent regime.

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