Unitary Patent: Territorial Scope of the Unitary Patent System

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.

This article provides an overview of the territorial scope of the Unitary Patent system, including which EU Member States are participating and how electing a Unitary Patent may affect patent protection in non-EU states that are members of the European Patent Convention (‘EPC’).

Enhanced Cooperation:

Enhanced cooperation was necessary for the Unitary Patent system because some EU Member States were not willing to participate in a single European patent system. As a result, enhanced cooperation was used to allow a group of willing states to move forward without unanimity. This procedure is regulated by Article 20 of the Treaty on European Union and Articles 326 to 334 of the Treaty on the Functioning of the European Union (TFEU).

All EU Member States except for Croatia and Spain are participating in the enhanced cooperation for Unitary Patent protection. However, both Croatia and Spain will have the option to join in the future through the procedure laid down in Article 331(1) TFEU.

The Unitary Patent System:

The Unitary Patent system aims to simplify and streamline the patent process in Europe by providing a single patent that is valid in multiple EU Member States. The system consists of two EU regulations: EU Regulation No 1257/2012 (OJ EPO 2013, 111) establishing a “European patent with unitary effect”, commonly referred to as the “Unitary Patent”; and EU Regulation No 1260/2012 (OJ EPO 2013, 132) outlining the translation arrangements for Unitary Patents.

These regulations have been in force since January 20, 2013, but will only apply from the date of entry into force of the Unified Patent Court Agreement (‘UPCA’).

Unified Patent Court:

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

For the UPCA to come into force and for the UPC to become operational, a certain number of contracting Member States must “ratify” 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, which meant that Germany’s ratification on 17 February 2023, was the final step needed to trigger the run-up period or ‘sunrise period,’ which started on 1 March 2023, for the UPCA to take effect on 1 June 2023.

During the sunrise period, necessary preparations are being made to establish the UPC. After this period, the UPC will be able to start hearing patent disputes across the participating countries.

Territorial Scope:

There are 39 Contracting states to the European Patent Convention (‘EPC’), otherwise known as the ‘Member States of the EPO.’ In addition, there are 10 Extension states, and 5 Validation states.

There are 27 EU Member States, and 25 of these participated in the enhanced cooperation, while two did not. From those that did, only 17 have actually ratified the UPCA and will thus participate in the Unitary Patent System when it starts.

The 17 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, and Sweden.

The 8 EU Member states which participated in the enhanced cooperation but have not (yet) ratified the UPCA are Czech Republic, Greece, Hungary, Ireland, Poland, Romania, 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.

The two EU Member states that did not participate in the enhanced cooperation are Croatia and Spain.

Croatia only joined the EU on 1 July 2013 and has not agreed to the enhanced procedure or signed the UPCA. However, given that no objections have been made, Croatia may consider joining the Unitary Patent System in due course.

Spain did not participate in the enhanced cooperation procedure to establish the Unitary Patent System. Spain chose to remain outside the Unitary Patent system and further challenged the use of enhanced cooperation as a procedure to enable the Unitary Patent System – this was dismissed by The Court of Justice of the European Union. Spain remains eligible to join the system through the procedure laid down in Article 331(1) TFEU.

UK & Brexit:

The UK ratified the UPCA on 26 April 2018 but, after withdrawing from the EU on 31 January 2022, it no longer participates in the Unitary Patent system.

Consequently, Unitary Patents do not cover the UK or other territories that have not ratified the UPCA as discussed below, which naturally will affect the process through which patent protection in the UK and Europe can be obtained via a European patent application.

Patent Protection in UK & 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 [1].

The territorial scope of the Unitary Patent System, therefore, in the current state of play, is that of the 17 EU Member states which have ratified the UPCA i.e., the ‘Contracting Member States of the Unitary Patent System’.

That said, there are a total of 22 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
• 10 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, Romania, Slovakia, and Slovenia, and Spain.

Once a European patent application is granted, applicants will have three primary choices: (i) opt to validate the European Patent in the traditional way and validate the European patent in selected EPC Member States; (ii) forego individual validations and choose a Unitary Patent that covers the Contracting Member States of the Unitary Patent System; or (iii) select a Unitary Patent along with validations (or extensions) for countries listed in the indents above that are either not eligible to be part of the Unitary Patent System or that are eligible to join, but did not or have not yet joined the Unitary Patent System.

The Extension States currently only includes Bosnia and Herzegovina [2], and the Validation States currently include Morocco, Republic of Moldova, Tunisia, and Cambodia [3].

This largely explains why the European Patent and the Unitary Patent are systems that will operate in parallel, once a European patent application is granted.

Conclusion:

The Unitary Patent System is set to simplify and streamline the patent process in Europe, making it easier and more cost-effective for inventors to protect their intellectual property rights across multiple EU Member States. The system eliminates the need for separate national validations, reduces translation requirements, offers more value for renewal fees, and provides a single point of entry for patent applicants.

However, it’s important to note that the territorial scope of the Unitary Patent system will only cover that of the participating EU Member States that have ratified the UPCA, i.e., presently, the 17 Contracting Member States of the Unitary Patent System out of a possible 27 EU Member States. Of course, this may change with time.

When the Unitary Patent System comes into effect on 1 June 2023, it will provide uniform protection that is valid in all participating EU Member States. However, applicants who elect to obtain Unitary Patents may still need to file validations for protection, where required, at least in the 12 non-EU EPC Member States.

[1] European Patent Office, Unitary Patent Guide, A. GENERAL, III. Unitary Patents: the concept, The Unitary Patent architecture, 18 – https://www.epo.org/applying/european/guide-up/html/e/index.html

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

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

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