European Patent with Unitary Effect
The new ‘Unitary Patent’ regime
Our civilisation is characterised by continuous evolution generated by human’s constant work of ingenuity, which allows reality to be shaped by tending to improve on the advantageous conditions hitherto achieved. From a legal point of view, invention has the task of explaining how a new, useful result is technically obtained, which enriches collective knowledge.
The valuable contribution made by the inventor encourages the community to ‘reward’ the inventor by granting the right to exclude others from exploiting the invention for a fixed period of time. The duration takes into account the time needed to remunerate the effort expended, without disincentivising general technological development.
This is the ratio behind the institution of the patent, which the Italian Patent and Trademark Office (UIBM) specifically attributes only to technological innovations with industrial application, which are presented as new, original and concrete solutions to a technical problem.
According to the principle of territoriality, this exclusive right is only effective within the issuing state. Therefore, if an inventor (individual, company or institution) is interested in exploiting the patent only in his national territory, may file the application at the UIBM following the prescribed procedures. If, on the other hand, it is interested in protecting the invention in more than one Member State, it may file a patent application with the European Patent Office (EPO), through the competent national offices. In that case, the owner of the invention with a single application may obtain recognition of the right to the invention in the states designated by him, which are parties to the European Patent Convention (EPC) . Once the procedure has been validated, a bundle of patents with effect in the chosen countries will be granted, each of which will be subject to its own national rules on infringement.
The implementation of this system, the complexity and high costs involved in filing and maintaining a patent, result in a significant competitive disadvantage for companies, which prefer to obtain a patent right in a limited number of countries, exposing the invention to the risks of exploitation by others.
To overcome these drawbacks, the EU passed a series of legislative measures with the aim of creating unitary patent protection. The result was the creation of the European patent with unitary effect (so-called unitary patent), the aim of which is to guarantee, against payment of a single fee, a single, uniform right that can be simultaneously extended to up to 25 Member States . In addition to simplifying the granting procedure and reducing costs, the protection of the unitary patent is uniform for each country and subject to the jurisdiction of the Unified Patent Court, avoiding the possible initiation of parallel litigation in the different national jurisdictions.
The regulation of the unitary patent is not envisaged as a substitute for the European patent, but rather as a complement to it, leaving the owner of the invention the choice of which level of protection to apply for. It is therefore a strategic assessment based on several factors, including, for example, the markets of interest.
Such a system can only be operational after the entry into force of the Agreement establishing the Unified Patent Court (UPC), scheduled for June 2023.
In order to adapt the current rules to the new discipline, the so-called sunrise period will begin on 1 April 2023, during which the owners of a European application or patent will have to decide whether to exercise the so-called Opt-Out option, through which it is possible to prevent the automatic attribution of jurisdiction in disputes to the CTI, leaving jurisdiction to the courts of the individual countries .
Notes
- Pursuant to Art. 45 CPI.
- Drafted in a language of your choice between English, French and German.
- The Convention regulates a common discipline of the contracting states regarding the granting of the European patent and establishes a European Patent Organisation, which is responsible for granting the patent right through the European Patent Office.
- EU Regulation No. 1257/2012 on enhanced cooperation in the area of the creation of unitary patent protection; EU Regulation No. 1260/2012 on enhanced cooperation with regard to the applicable translation arrangements; Agreement establishing the Unified Patent Court for the settlement of disputes concerning European patents and European patents with unitary effect.
- here are currently 17 countries participating in the unitary patent regime: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Seven more states will join following the completion of certain required legislative procedures: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia.
- It should be noted that initially, depending on the states that have transposed Council Agreement No. 2013/C 175/01, there will be several generations of unitary patents with different territorial coverage that will remain invariable for the duration of the design right.
- In the case of patents co-owned by two or more owners, as is the case, for example, with patents developed collaboratively between a company and a university, one point of attention is that the Opt-Out choice must be made by all patent owners.
- In fact, the Unified Patent Court, once established, will have jurisdiction together with national courts on disputes concerning both unitary and European patents for a transitional period (7 years).