Unitary patent in a nutshell

TRANSITIONAL MEASURES

In the final stage of the procedure for granting patent protection – even before the Unified Patent Court Agreement enters into force – two types of transitional measures can be applied for. The transitional measures provided by the EPO are intended to encourage applicants to apply for registration of a European patent with unitary effect. The transitional measures are available from January 1, 2023. The new patent system will be in force from June 1, 2023 together with the Unified Patent Court.

  The first measure gives Applicants the opportunity to apply for protection before the launch of the new system. Once the system is up and running, the EPO will immediately process such applications and register European patents with unitary effect.

  The second measure gives the applicants the opportunity to submit a request for a delay in issuing a decision on granting a patent. Such a request will result in the grant of a patent being published in the European Bulletin after the entry into force of the Unified Patent Court Agreement. Without such an application, publication could have taken place earlier, making it impossible to file an application for registration of the European patent with unitary effect. Patent protection would be granted under the existing conditions, where it would be necessary to validate the European patent in individual countries.

UNIFIED PATENT COURT

The Unified Patent Court is a court common to all states that are members of the Unified Patent Court Agreement. It will be the only competent court for unitary patents and existing European patents that have been validated in the countries where the Agreement will be in force.

The jurisdiction of the Unified Patent Court will include:

• • patent/SPC infringement,
• • declaration of no patent infringement,
• • provisional measures,
• • revocation of unitary patents,
• • actions for damages or compensation derived from the provisional protection conferred by a published European patent application,
• • compensation for licences,
• • decisions of the EPO regarding unitary patents,
• • prior usufruct right.

After the entry into force of the new system, there will be a 7-year transitional period during which proprietors of European patents (under the rules applicable so far) may bring infringement or revocation cases to national courts and may resign from being subject to the Unified Patent Court. The transitional period may be extended for another 7 years.

Proprietors of European patents granted or applied for at the end of the 7-year transitional period may submit an opt-out application, in which the proprietor submits a declaration that the indicated European patent will not be in the jurisdiction of the Unified Patent Court and this is effective until such declaration is withdrawn. After the end of the transition period, it will no longer be possible to submit such a declaration. Please note that it is possible to submit the declaration before the entry into force of the Unitary Patent system – this is a transitional period (sunrise period).

LEGAL REPRESENTATIVES

A party may be represented before the Unified Patent Court by lawyers authorized to appear before a court of a Contracting Member State and European patent attorneys with appropriate qualifications. The representatives of the parties may be assisted by the patent attorneys of the Member States, who have the right to speak at the hearing. In Poland, only European attorneys with appropriate qualifications are authorized to represent the party in court. The AOMB law firm cooperates with four European attorneys who will be able to represent clients before the Unified Patent Court.

There are exceptions where the party does not need to be represented by a legal representative:

• • appealing against the decision of the EPO regarding the registration of a European patent with unitary effect
• • submitting an opt-out application
• • submitting an application for legal aid
• • payment of official fees.

COSTS OF THE PROCEEDINGS

Upon obtaining the decision to grant patent protection and after the registration of the European patent with unitary effect, proprietors pay annual application/patent protection fees. The costs of maintaining a patent with unitary effect over 20 years are presented on the EPO website.

In the case of protection in Germany, France, Italy and the Netherlands (under the current system), it is more financially viable to choose the unitary patent. A detailed simulation is available on the website of AIPEX – our European alliance.

We have also created a unitary patent and validation cost comparison sheet in individual countries – available here.

PATENT REVOCATION

A patent can be revoked according to two procedures – before the EPO or before the Unified Patent Court. Within 9 months from the publication of information of granting the patent in the European Bulletin, patent revocation proceedings may be conducted only before the EPO. The cost of an application for revocation is EUR 560. After 9 months, the Unified Patent Court becomes competent, where the cost of the application is EUR 20,000 + legal representation costs.

Costs of court fees

Fixed and additional costs of court fees are included in this document.

Companies that meet the requirements to qualify as small/medium-sized enterprises (SMEs) pay only 60% of the fixed fees and the amount in dispute.

THE PROCEDURE FOR APPLYING FOR A UNITARY PATENT

After the publication of the information on the grant of a patent in the European Patent Bulletin, the applicant has one month from the date of publication of the information to submit an application for registration of the European patent with unitary effect. Such an application contains the proprietor’s data, the EP patent number and any information about the representative.

A translation of the content of the patent must be submitted with the application for registration. If the language of the entire procedure for applying for a patent was English, a translation into a language of one of the European Union countries should be submitted – e.g. Polish. If the language of the procedure was German or French, the translation into English should be submitted.

If the application for registration of the unitary patent has formal deficiencies, the proprietor has 1 month to complete them.

If the application is not filed within one month of the publication of the information on the patent grant, the deadline may be reinstated for a fee, provided that due diligence is shown. The application for reinstatement of the deadline must be received within 2 months from the deadline for submitting the application.

PROCEDURE BEFORE THE UNIFIED PATENT COURT

The structure of the Unified Patent Court consists of: the Court of First Instance, the Court of Appeal and The Registry. The Court of First Instance consists of a central division – based in Paris with branches in London and Munich, local divisions – established in the Member States and regional divisions – established for two or more contracting Member States.

The action should be submitted to the appropriate division. There are several cases where:

• • the appropriate division is the division to which the territory where the infringement was subordinated,
• • the competent division is the division to which the territory in which the defendant is domiciled belongs – if the defendant is from a country not belonging to the Member States, the relevant division is the central division,
• • if the territory of a State is not covered by any division, the application should be filed with the central division,
• • a claim for revocation must always be filed with the central division, with the exception of counterclaims,
• • in the case of counterclaims, the appropriate division is the one where the application concerning the patent is pending,
• • the parties agree on the appropriate division, including central division.

The procedure before the Unified Patent Court is divided into three stages: written, interim and oral.

During the written procedure, each party may comment twice on each of the issues discussed during the proceedings. The whole procedure lasts up to 8-9 months.

Evidence to be taken and a possible settlement is considered. The court may additionally oblige the parties to submit additional explanations, summarize the position or send the indicated documents. It is also a period of preparation for the trial and it lasts up to 3 months.

Oral procedures are hearings at which witnesses are questioned, evidence is taken and the parties’ positions are summarized. The sentence is passed up to 6 weeks after the trial.

The language of the proceedings will be the language of the country where the division of the court is located or English. Additionally, it is possible to apply for a change of the language of the proceedings to the language of the patent, i.e. English, German or French.

The judgment of the court has effect in all territories where the European patent with unitary effect is valid.

At the request of the patent proprietor, which makes it probable that an infringement has occurred, the court may apply interim measures. Such measures may include the taking of samples, the physical seizure of products and documents and, in some cases, materials and tools used in the manufacture, or the prohibition of distribution of the products. The court may order interim measures before or during the proceedings.

The allegedly infringing party may file the request to revoke the measures preserving evidence if the patentee does not file a judgment action within 31 calendar days/20 working days of the decision.

If the interim measures are revoked or no infringement is found, the defendant may file an application for appropriate compensation for damages caused during the application of the interim measures.

If the person entitled to bring proceedings (patent proprietor, licensee) considers it likely that the application for interim measures may be brought before the court in the near future against him as a defendant, he may file a letter of protection. The letter must be filed with the Registry of the Court in the language of the patent with the designation of the defendant, presumptive applicant, postal and electronic addresses, possible patent number and a statement that the letter is the letter of protection.

Once the application for interim measures has been filed, a copy of the cover letter is transferred to the case file. The protection letter is not publicly available. If no application for interim measures is made within 6 months of receipt of the letter of protection, the letter is removed from the register. It is possible to extend the validity of the letter for another 6 months. Each period of 6 months of storing the protection letter in the register is payable by 200 Euro.

Author: Magdalena Przytocka