The classic European patent system
The European Patent Convention provides a central application and grant procedure for European patents. As soon as the European Patent Office grants a patent, it automatically takes effect in a number of countries (whether or not after payment of a fee) and can be “validated” against payment in the other countries participating in the treaty.
The patent then turns into a bundle of national patents. During the first 9 months after the grant, the validity of these patents can still be contested centrally at the European Patent Office. After this so-called opposition period, the validity of these national patents can only be contested through the national courts.
In any case, infringement cases must be settled before the national court on a country-by-country basis.
To maintain the national patents, taxes must be paid annually per country.
A Unitary European patent
As of June 1, 2023, it will be possible to register a granted European patent as a unitary patent. This unitary patent will take effect in all 17 countries participating in the unitary patent treaty. In the other countries, protection can be sought by means of the classic European patent. This Unitary patent has advantages and disadvantages.
A first advantage of the unitary European patent is that infringement cases can be conducted through the Unified Patent Court (UPC), a new central European patent court. That makes it easy to tackle a competitor directly in various countries. A second advantage is that the costs for granting will be lower in all 17 participating countries and that the renewal fees for a unitary European patent correspond to those for approximately five national patents. For the same amount, protection is therefore obtained in a larger territory.
A disadvantage of the unitary patent is that, even after the opposition period at the European Patent Office has expired, during the entire period of validity of the unitary European patent, invalidity proceedings can be conducted before the Unified Patent Court, whereby the entire patent can be declared invalid at once for all counties. The lower renewal fees also have a possible disadvantage: it is only possible to maintain or cancel the patent for all countries at the same time. It is therefore not possible to stop paying for one specific country or a selection of countries.
The decision on a bundle of national patents, a unitary European patent or even a combination of the two must be taken within one month of the publication of the grant of the European patent. We will remind you of this as soon as the European Patent Office issues an “intention to grant” for a European patent application.
Consequences for classic European patents
The Unified Patent Court will be competent not only for unitary patents, but also for adjudicating infringement and invalidity cases concerning European patents already in force. This is easy for you as a patent holder when a pan-European infringement case has to be conducted, but entails a risk of a central invalidity procedure. Because there are no financial advantages for granting or maintaining European patents that have already been granted, we recommend refusing the jurisdiction of the Unified Patent Court for all granted European patents that we manage for you.We call this “opting out”. As a result, the situation of these patents will remain as it is now. If an infringement case nevertheless takes place, you can later choose once to declare the Unified Patent Court competent for the patent in question (“opt-in”).