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Unitary European Patent: Can You File a Unitary Patent? - Are You a Gambler?
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Following our previous post, the Unitary Patent Regulation [EU 1257/2012]; the related Language Regulation [EU 1260/2012]; and an updated version of the Unified Patent Court Agreement are now available [16351/12].

The Unitary Patent Regulation and the Language Regulation will apply from 1st January 2014 or the date of entry into force of the Agreement whichever is the later [Article 18 EU 1257/2012]. The Agreement comes into force four months after the thirteenth state ratifies. UK, France and Germany must be included in these states [Article 89 16351/12].

The following are some further features of the Unitary Patent proposal.

Can You File a Unitary Patent?

No. There is and will be no such thing as an application for a unitary patent. An application will filed as a European patent application, and unitary effect will be claimable on grant of their European patent if this takes place on or after the Unitary Patent Regulation comes into force. This will apply to any applicant. There are no nationality restrictions as to who may claim unitary effect.

Unitary effect of a European patent can only be requested where the European patent is granted in respect of all the participating Member States [Article 3(1) EU 1257/2012].

The participating states can only be members of the European Union. Of the eligible states, Italy and Spain have declared their intention not to accede to the Unitary Patent Regulation.

The remaining eligible states are Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, France, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom.

Other countries queuing to join the EU, and so which may become eligible in the future, include:-

  • Iceland, Macedonia, Montenegro, Serbia, and Turkey – all of which are candidate countries

  • Albania, Bosnia & Hercegovina, and Kosovo, which are all “potential candidates” for EU membership.  Of these three, Albania appears closest to being declared a candidate country.

The last of the currently eligible states to join the EPC was Malta, which joined 1st March 2007. If the Unitary Patent Regulation is ratified, and if Malta signs up for it, then the consequence is that no European patent with a filing date prior to 1st March 2007 will be eligible for unitary effect.

In our last post we mentioned Croatia as being among those countries that are not eligible to accede to the Unitary Patent Regulation.

However, subject to ratification of an accession treaty by all EU countries and Croatia, then the country will become the 28th EU member country on 1 July 2013.  If Croatia accedes to the EU and also accedes to the Unitary Patent Regulation, then it would appear that no European patent with a filing date prior to 1st January 2008 will be eligible for unitary effect.

If Macedonia and Serbia join the EU and accede to the Unitary Patent Regulation then the moment they do so then it would appear that no European patent with a filing date prior to their EPC accession dates [1st January 2009 and 1st October 2010 respectively], will be eligible for unitary effect. While not imminent, this gives the prospect that a window of opportunity for claiming unitary effect may open, for example, for applications with a date range 1st January 2008 -1st January 2009 and then close again if Macedonia joins the EU.

If Montenegro joins the EU it will need to join the EPC. When it does, then its accession date to the EPC could mark a new closure to the opportunity to file unitary patents.

Both Iceland and Turkey acceded to the EPC before Malta and so are unlikely to affect eligibility for unitary patents if they join the EU.

If unitary protection is desired then, depending on timing, it may be advisable to request acceleration of applications that might be precluded by such window effects.

This successive shrinking of the pool of patents that can benefit from unitary protection would appear unfortunate. The specific language of the first paragraph of Article 3(1) EU 1257/2012 is that:-

A European patent granted with the same set of claims in respect of all the participating Member States shall benefit from unitary effect in the participating Member States provided that its unitary effect has been registered in the Register for unitary patent protection.

The above analysis is on the basis that the European patent has to have a designation for all the participating states. However, there are so-called extension countries and it may be argued that a European patent granted on an application where an extension country is named is a European patent granted in respect of that extension country. [Whether this argument is legally correct is uncertain, but as it gives a way to mitigate the effect of new accessions it may be seized on].

Accordingly, if you wish to preserve the opportunity to file unitary protection, it may be advisable to pay any applicable extension fees on filing or entry into the European regional phase.

Are You a Gambler?

The second paragraph of Article 3(1) EU 1257/2012 states that:-

A European patent granted with different sets of claims for different participating Member States shall not benefit from unitary effect

At present, European patents may be granted with different sets of claims for different participating Member States where there is a conflicting earlier-filed-later-published national right; or, for some older applications, where there is a conflicting earlier-filed-later-published European patent or application with overlapping designations.

It should be noted that under the present system if such an earlier right is found post-grant, then it is possible to amend the patent to have different claims for different countries to avoid that right. This results in a patent having different scope in different countries, or in the extreme case revocation in one or more countries but maintenance in one or more others.

However, under the unitary patent this will not be possible. Article 5(2) EU 1257/2012 states that:-

The scope of that right and its limitations shall be uniform in all participating Member States in which the patent has unitary effect.

This means that an earlier national right will have prior art effect for the entire unitary patent which may be limited (or revoked) only as a whole. This could constitute a significant loss of rights in comparison with a “bundle” patent and represents a significant risk; particularly as such earlier rights may not be available in English, and include utility models which can be problematic to search.

Choosing unitary patent effect means that you are gambling the entirety of your granted patent.

You don’t just risk a hole in your cheese, you risk the whole cheese.