European Parliament Approves European Unitary Patent Scheme to Begin January 2014

Intellectual Property Update

Date: December 20, 2012

Overview

On December 11, 2012, the European Parliament approved a statutory scheme to provide European patents with "unitary" effect, and created a Unified Patents Court system for enforcement. Barring any challenges to implementation, these measures will take effect January 1, 2014.

If these measures are implemented, three different systems to obtain patents covering the European Union will exist:

(a) Individually, by national patent statutes.

(b) Under the European Patent Convention (EPC) after examination at the European Patent Office (EPO), which results in national patents of EPC contracting states (currently 38 states).

(c) Under the new EC regulations, after the EPO grants a patent with "unitary effect," for all 27 EU member states except for Spain and Italy, which have opted out of the scheme for the present.

Systems (a) and (b) currently are available. In 2014 (c) will become available to applicants. At the end of patent prosecution in the EPO, under the new regulations, an applicant will be able to request that the granted patent be given "unitary effect"; that is, have legal effect in all EU countries except Spain and Italy. (A European patent may be validated in the other nine countries of the EPC, as presently done.) Initially, the granted unitary patent will be translated only into English (if not in English already), presumably to save substantial translation expenses compared to options (a) and (b).

The new Unified Patents Court, with trial and appellate divisions, will have exclusive jurisdiction for enforcement of patents given unitary effect and, until 2021, non-exclusive jurisdiction over all patents granted by EU countries. If the non-exclusive jurisdiction is not extended another seven years after 2021, the Unified Patents Court will thereafter have exclusive jurisdiction over enforcement of all patents given unitary effect. The court will be seated in Paris, with central offices in London and Munich, and local offices in each member state. The court docket apparently will be distributed by technical subject matter.

New procedural rules providing greater detail about the new scheme are expected to emerge quickly. While the unitary patent scheme potentially reduces translation costs to obtain patents, there are no doubt traps for the unwary when trying to enforce such a patent. At this point, many in the patent bar are merely "reading the tea leaves" in assessing the risks of the new system. Those affected should consider consulting experienced patent counsel to begin planning for this important change.