EPO or European Patent Organization is the body that currently is tasked with the activity of granting European patents. Any patent applicant can apply for a European patent which shall be valid in all its contracting states, however, the enforcement of a European patent is territorial or country-specific, each designated countries has to individually validate the granted patent. The validity of the European patent is tested as per the laws of the specific country in which it is being litigated.
In 2012, the European Parliament and European Union laid the foundation of unitary patent protection, subsequently followed by an agreement on Unified Patent Court The Unitary Patent System is envisaged to facilitate applicants in protecting their inventions in all 25 countries that are part of European Union with filing a single patent application. After the patent application has been granted there would be no requirement for separate validation in each of the countries.
A Unitary patent shall be a European patent that has a unitary effect which shall be granted by the EPO under the regulation of EPC After the grant of the patent application the applicant may choose to make it a unitary patent, wherein it will have unitary effect in the member states of EU. Unitary patent would exist along side the national patents and ‘classical’ European patents. In effect, there would be three ways of obtaining patent protection in countries that are part of UPS signatories.
- Filing a national application in country-specific offices
- Filing for a European patent and proceed with national validation after grant
- Filing for a European patent and selecting unitary patent after grant
An essential feature of the unitary effect of would be the uniform protection and equal effect in all the member states of UPS or Unitary Patent System. The unitary patent may be transferred, revoked or lapsed in respect of all the member states involved. When licensing such a patent, it can be done for all the member states or part of them.
One of the primary requirements for obtaining a unitary patent is that the European patent application must be granted retaining the same claim set in all the member countries. Withdrawal/Change of claims or withdrawal of the patent application form in any of the designated countries before the grant would automatically lead to non-receipt of unitary patent status. Once a patent application has been granted, a request has to be made for unitary effect within a month of mention of such a grant in the European Patent Bulletin. When filing for the request of the unitary patent, it must also contain a translation of the said European patent. If the patent has been filed in English, then the description has to be translated to any other official language of EU, similarly, if the patent has been filed in German or French a translation of the description has to be provided in English. Claims that have already been translated into two other official languages other than that in which the proceedings have taken place can be reused. If an applicant desires unitary effect, a request to that effect has to be made to the EPO. If the formal requirements set by the EPO is not met, EPO provides a window of non- extendable period of one month for complying with the requirements, failing which request for unitary effect would be rejected.
Unitary Patent System is linked to the Unitary Patent Court which would have jurisdiction over both unitary as well as classic European patents. Although the EU regulations establishing the Unitary Patent system have entered into force on 20 January 2013, they would become applicable only from the enforcement date of the UPC Agreement, which shall be the first day of the fourth month following the deposit of the 13th ratification document. It is expected that UPS shall become operational in 2018.
We are closely following the implementation of the same. As soon as the same is implemented we shall be able to assist with the drafting, filing and any other support that is required under the said system.