Unitary Patent: Romania

Introduction:

The Unitary Patent or ‘European patent with unitary effect’ is a unique product of “enhanced cooperation” – a procedure allowing nine or more European Union (‘EU’) Member States to work together towards greater integration within the EU structures without the involvement of non-participating Member States.

Unified Patent Court:

The Unified Patent Court (‘UPC’) is a single court that has jurisdiction over Unitary Patents and provides a single forum for patent disputes in participating EU Member States.

The Agreement on a Unified Patent Court (‘UPCA’) came into force and the UPC became operational when a certain number of contracting Member States “ratified” the agreement. Ratification is a legal process where a country formally approves and adopts an international agreement, making it a part of the country’s national law.

France and Italy, among other contracting Member States, had already ratified the agreement when Germany ratified the agreement on 17 February 2023 – the final step needed to trigger the run-up period or ‘sunrise period,’ which started on 1 March 2023 – and the UPCA took effect on 1 June 2023.

Romania:

“Romania recently became the 18th Member State to ratify the UPCA.

On 31 May 2024, Romania deposited its instrument of ratification and will accede to the UPCA on 1 September 2024. As such, Romania has deposited its instrument of ratification of the UPCA on 31 May 2024, becoming the 18th Member State to ratify the Agreement.

According to Article 89(2) UPCA, the Agreement will enter into force in Romania on 1 September 2024.” [1]

Territorial Scope:

There are 39 Contracting states to the European Patent Convention (‘EPC’), otherwise known as the ‘EPC Member States.’ In addition, there are of course Extension states (Bosnia and Herzegovina remaining only) and 5 Validation states.

There are 27 EU Member States, and 25 of these participated in the enhanced cooperation, while two did not – Croatia and Spain.

From those that did, 18 participating EU Member States have now ratified the UPCA and thus – pending Romania – participate in the Unitary Patent System.

The 18 EU Member States which participated in the enhanced cooperation and have ratified the UPCA are:

• Austria, Belgium, Bulgaria, Cyprus, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania and Sweden.

With the addition of Romania – effective 1 September 2024 – the market scope of the Unitary Patent will increase by 19 million people to the area of 330 million people already covered by the UP system [2].

The 7 EU Member states which participated in the enhanced cooperation but have not (yet) ratified the UPCA are:

• Czech Republic, Greece, Hungary, Ireland, Poland, Slovakia, and Slovenia.

Poland subscribed to the decision on enhanced cooperation, but decided not to ratify the UPCA and join the Unitary Patent System, although it may well reconsider this decision in the future.

Since the introduction of the Unitary Patent on 1 June 2023, the European Patent Office (EPO) has registered 33,000 Unitary Patents from over 34,000 requests for unitary effect. Notably, 63% of these requests have come from EPO member states. Additionally, nearly 25% of European patents granted in 2023 have been converted into Unitary Patents [2].

Read more on the UPC’s inaugural year here: UPC: A Year of Pawsitive Progress.

Patent Protection in Europe:

A Unitary Patent is a “European patent with unitary effect,” which means a European patent granted by the European Patent Office (‘EPO’) under the rules and procedures of the EPC to which, after grant, unitary effect is attributed for the territory of the participating Member States at its proprietor’s request [3].

Once the Agreement on a Unified Patent Court enters into force in Romania on 1 September 2024, the territorial scope of the Unitary Patent System will be that of the 18 EU Member states which have ratified the UPCA i.e., the ‘Contracting Member States of the Unitary Patent System’.

However, there will still be a total of 21 of the 39 EPC Member States for which patent protection cannot be obtained via the Unitary Patent System but which can be obtained via validating a European patent:

• 12 non-EU EPC Member states which are not eligible to join the Unitary Patent System: Albania, Iceland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, San Marino, Serbia, Switzerland, Turkey, and the UK; and

• 9 EU Member States which are eligible to join, but did not or have not yet joined, the Unitary Patent System: Croatia, Czech Republic, Greece, Hungary, Ireland, Poland, Slovakia, and Slovenia, and Spain.

Hence, granted European patents can be converted to Unitary patents or not; hence, the Unitary Patent systems and classic European Patent systems continue continue to operate in parallel.

With regard to Extension States – Between 1993-2009, the EPO signed extension agreements with ten non-member states; only the extension agreement with Bosnia and Herzegovina, which is not an EU Member State and not eligible to participate in the Unitary Patent system.

Of course there are also the five validation states for which patent protection can be obtained via validating a European patent:

• Morocco, Tunisia, Moldova, Cambodia, and Georgia are not EU Member States and therefore not a party to the UPCA. That said, Georgia applied for EU membership in March 2022 and was granted candidate status in December 2023 – the accession of Georgia to the EU is currently on the EU agenda.

On 13 May 2024, Laos became the sixth country to sign a Validation Agreement with the EPO – once it enters into force, the agreement will streamline market access into Laos for European patent applicants, facilitating foreign direct investment, trade, and technology transfer. Laos is, of course, not an EU Member State and not eligible to participate in the Unitary Patent system.

For more information, please refer to our previous articles in relation to the Unitary Patent:

• Unitary Patent: Territorial Scope of the Unitary Patent System – https://alphabetip.co.uk/the-alphabetical/unitary-patent-territorial-scope-of-the-unitary-patent-system/

• Unitary Patent: Unitary Effect & Opt-out – https://alphabetip.co.uk/the-alphabetical/unitary-patent-unitary-effect-and-opt-out/

• Unitary Patent: Cost Savings Opportunity – https://alphabetip.co.uk/the-alphabetical/unitary-patent-cost-savings-opportunity

This article is intended for general informational purposes only and should not be considered as legal advice.

References:

[1] Romania becomes the 18th Member State to ratify the Agreement on a Unified Patent Court (UPCA) – https://www.unified-patent-court.org/en/news/romania-becomes-18th-member-state-ratify-agreement-unified-patent-court-upca

[2] Unitary Patent now covers Romania – https://www.epo.org/en/news-events/news/unitary-patent-now-covers-romania

[3] Extension states of the EPO – https://www.epo.org/about-us/foundation/extension-states.html

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