Making sense of Europe's unitary patent

• Author: Gwilym Roberts - Julia Venner
• Position: Partner - Associate, Kilburn & Strode, LLP, London, UK
• Pages: 14-16

p. 14 2014 | 3

By Gwilym Roberts, Partner an d

Julia Venner, Associate, Kil burn & Strode,

LLP, London, U K

As a concept, a unitary Europ ean patent has been under d iscussion, in one form or

another, for over four decades. In the last couple of yea rs, however, there have been

signicant developme nts in the implementation of the so-called “EU Patent Package”

(the Unitary Patent Regulatio n (Regulation No. 1257/2012) which impl ements enhanced

co-operation in this area, togeth er with the applicable Translation Arrangements (Re g-

ulation No. 1260/2012), and the Agreement on the Unie d Patent Court). The aim of

the EU Patent Package is to provide a single pan-Europe an patent and a single court

for litigation of European patents. While thi s package is being herald ed by some as

a means to make access to the patent system easie r, less costly and more legally

secure, by providing uniform patent protection i n all participating mem ber states, it

remains to be seen whether the cu rrent proposals will actually deliver these b enets

to patentee s.

UNITARY PATENT

The Unitary patent wi ll sit alongside “standard ” European patents granted by the

European Patent Ofce (EPO), which are su bject to a national validation proce dure

to take effect in the designated states.

The process of applyin g for a European patent, the examination of the patent ap-

plication by the EPO, and the EPO grant formaliti es will remain unchang ed under

the new regime; the differenc e arises after grant. In orde r to obtain a unitary patent,

the patent owner must le, within one mon th of grant, a “Request for Unitar y Effect”

and, during a transitional p eriod, the applicable tran slation. European patents will

continue to be granted in English, French or G erman. English-languag e patents will

require translation into any other languag e of an EU member state. French or German

language patents must be transl ated into English. Such translations will be re quired

until suitably accurate machine translations are available (and for a maximum of 12

years after the Regulatio n enters into force).

Keeping the unitary p atent in force will require the annual p ayment of progressive

renewal fees to the EPO. Once granted, a unitar y patent is intended to provide uniform

protection having equal ef fect in all participating member states. A un itary patent can

be enforced, assigned, revoked, limited an d can lapse in all par ticipating member

states, and can be licensed in re spect of the whole or par t of the territories of the

states. For example, it will only be poss ible to assign a unitary patent in respect of all

of the participating memb er states. It will, however, be possible for th e patent owner

to grant a third party a lice nse to use the patented invention in respect of only some

of the participating memb er states, for example the UK, France and G ermany.

Under the current system, a granted Europea n patent can be validated in up to

38 European Patent Convention (EPC) states and 2 “extensi on states” (Bosnia &

Herzegovina and Montene gro). Although the new system moves towards a single

pan-European patent, the unitar y patent will still have a somewhat “patchwork” na-

ture. Only European Union (EU) states m ay be party to the Unitary Patent Regulation

(“the Regulation”). Many EPC states are not EU states (for exampl e, Switzerland and

Norway) and will therefore not be covere d by the unitary patent. Furthermore, two EU

Making sense of Europe’s

UNITARY PATENT