The Unitary Patent (UP) system will allow applicants to get uniform patent protection in up to 25 EU Member States by submitting a single request to the European Patent Office (EPO) after publishing of the granted European patent and is now intended to start on 1 June 2023.
The UP system is linked to the creation of the Unified Patent Court (UPC), which will have jurisdiction over Unitary Patents and “classic” European patents. In order to allow future users to prepare themselves for the new system, the EPO has decided to introduce two transitional measures which will be made available ahead of the entry into force of the Unitary Patent system, as of 1 January 2023.
When the UP system enters into force, the Unitary Patents will cover the member states which have already deposited their instrument of ratification. Up to the moment, the 17 member states which will participate in the Unitary Patent when it starts are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
It is expected that outstanding ratifications take place successively for the members participating in the enhanced cooperation, namely, Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania, and Slovakia.
For the countries which are not members of the UP system, such as the United Kingdom, Spain, Switzerland, Turkey and Croatia, the “classic” route, i.e., national validation, applies.
"The UP system is linked to the creation of the Unified Patent Court (UPC), which will have jurisdiction over Unitary Patents and “classic” European patents. In order to allow future users to prepare themselves for the new system, the EPO has decided to introduce two transitional measures which will be made available ahead of the entry into force of the Unitary Patent system, as of 1 January 2023."
Transitional period (Sunrise period)
At the moment the UPC Agreement entries into force, two transitional measures are predicted for the European patent applications which have reached the final phase of the grant procedure, namely:
In this case, the unitary effect will be registered when the Unitary Patent system starts, provided that all corresponding requirements for registration are met.
Since the Unitary Patent protection can only be requested for European patents granted by EPO on or after the date of entry into force of the UPC Agreement, this measure will make it possible to postpone the granting date of the European patent to make it eligible for Unitary Patent protection.
All post-grant administration will be handled by the EPO, reducing the costs and the administrative workload.
For example, when the European patent was filed in English, its translation to any other official language of a member of the UP system is different from the language of proceedings before EPO is accepted, such as Portuguese.
Also, a compensation scheme will cover the costs of translating the application in the pre-grant phase for EU-based SMEs, natural persons, non-profit organizations, universities, and public research organizations, when the request of examination of the European patent application or Euro-PCT application leading to the UP was filed in an official EU language other than English, French or German.
As regards litigation involving “classic” European patents, for a transitional period of seven years (extendable), actions for infringement or for revocation may still be brought before national courts and the patent owner will be able to opt-out of the UPC's jurisdiction for the entire lifetime of the patent. However, opting out is not possible for UP.
The applicant will be free to choose between the UP system, the “classic” system, or both of them, depending on the costs involved, the protection strategy and the countries of interest.
For more information about the Unitary Patent System contact us at firstname.lastname@example.org
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