The European Patent Office and participating European Countries have established a Unified Patent Court and a European patent with unitary effect (also called a Unitary Patent) that will come into effect on June 1, 2023.

The Unified Patent Court is a single international patent court established to handle infringement and validity disputes for both European patents and European patents with unitary effect.

The Unitary Patent will provide patent protection in all participating European member states, which currently are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. Other member states may decide to participate in the future.

A Unitary Patent may lower translation and annuity costs for patent applicants in some circumstances since there will be a single fee due rather than individual fees in each European country where the patent is validated. The threshold for when the Unitary Patent may be less expensive than the regular European patent is about four or more countries, depending on which countries.

For European patents that are granted on or after June 1, 2023,you will have the option of registering your European patent as a Unitary Patent or “opting out” of the new system and validating your European patent in the individual national countries. The European patent may also be validated in the European member states that are not participating in the Unitary Patent.

Impact on Existing European Patent Matters

When this new system goes into effect, all granted European patents that are currently in force and all pending European patent applications will immediately come under the jurisdiction of the new Unified Patent Court. The national courts will also retain jurisdiction to hear infringement and validity disputes in the states in which the European patent is validated.

The Unified Patent Court will have the authority to revoke a European patent in all participating states following a successful invalidity action against the patent in the Unified Patent Court. Thus, a single successful invalidity action in the Unified Patent Court would result in a complete loss of patent protection in all the EU states that participate in the Unitary Patent system.

Opting Out

During an initial transitional period of seven years (which may be extended), it will be possible to “opt out” a European patent from the jurisdiction of the Unified Patent Court. Any patent that has opted out will be subject only to the jurisdiction of the national courts in which the European patent has been validated and will not be vulnerable to central revocation by the Unified Patent Court. Patent owners will have the option of withdrawing an opt-out request as long as no action is then pending in a national court.

A “sunrise period” for opting out of the Unitary Patent system for granted European patents and published European patent applications should end on May 31, 2023. European patents and patent applications that have opted out of the system before that date will not fall under the jurisdiction of the Unified Patent Court or be vulnerable to central revocation. It will be possible to opt out after the sunrise period, but your European patent will be vulnerable to central revocation in the interim.

If you want to protect your most valuable European patents and patent applications from the risk of central revocation, then we recommend that you opt out now.

Although there are no government fees for filing the opt-out requests, there will be attorney fees incurred by foreign associates to file these requests with the European Patent Office. These fees will vary based on the number of cases involved.

Conclusion

The risk of central revocation of a European patent by the Unified Patent Court makes it important to consider opting out of the Unitary Patent system for any important European patents in your patent portfolio.