New law: Inventors start to plan for patent upheaval as new unitary patent regime looms

The new unitary patent will protect an invention across all EU member states that have ratified the Unitary Patent Court (UPC) agreement, through grant of one patent enforceable in one court. This differs from the current European patent rules under which inventors apply for a bundle of independent, national patents, enforceable/revocable only in their respective national courts. It is anticipated that 24 of the 27 EU member states will finally ratify the agreement – all except Croatia, Spain and Poland.

Applications for grant of a unitary patent will be made via the same European Patent Office as administers European patents, but the application will indicate that the applicant is applying for a unitary patent rather than a European one. The unitary and European patent regimes will run side by side, and applicants can choose which they want.

It has been estimated that, once granted, the costs of renewing a unitary patent will be the equivalent of around six national patents, so using a unitary patent to protect an invention in more than six countries will create annual savings.

For UK inventors, the unitary patent can be used to protect their invention in ratifying states, but separate registrations will be required in non-ratifying countries – such as the UK itself (now a non-EU member), Spain in the EU, and Norway, Switzerland and Turkey outside it.

The new rules may not be in place until the end of 2022. In the meantime, it may be possible to obtain European patents now that can later be converted to unitary patents.

In due course, it is intended that the UPC will have jurisdiction not only over proceedings relating to unitary patents, but also over those relating to European patents, in parallel with the national courts.

However, when this happens, those with European patents will be able to opt out of the UPC’s jurisdiction. Deciding whether or not to opt out may be difficult decision – for example, if a grantee does not opt out, revocation of one of a grantee’s European patents by the UPC could result in all of them being revoked - and legal advice is likely to be required.

Operative date

• To be confirmed

Recommendation

• UK inventors should plan whether to apply for unitary patents to protect their inventions, and which inventions to protect using European patents instead, taking into account the costs/fees and protections offered by each, and likely timescales.
• Inventors should also consider whether to slow existing European patent applications down until the new unitary patent is in operation.
• Agreements between licensors and licensees may need to be reviewed and renegotiated because of the new regime – for example, to clarify who controls whether grants can be converted from European to unitary patents and who controls the right to opt out of UPC jurisdiction in due course.
• If in doubt, take specialist legal advice.