After 40 years of debate, and after many more steps back than steps forward, with a historic decision the EU Parliament passed, on December 11, 2012, the so-called unitary patent package.

This package entails the creation of a unitary patent, i.e. a single EU patent (covering, at present, 25 out of 27 EU member states), and of a unified patent court competent for ruling on the validity and infringement of both the unitary patents and the “traditional” European bundle patents.

The entire system should enter into force on January 1, 2014 or thereafter, i.e. if the number of countries required for its entry into force is reached only after that date (also assuming that the legal actions taken by the two non-participating EU states are not successful, as seems to be more likely at present). Upon entry into force, the new system will also apply to all European applications still pending at that time.

As regards the procedure up to grant, nothing will change. The EPO will continue to be responsible for filing, search and examination of all European applications. The EPO will also continue to remain responsible for all post-grant oppositions.

Indeed, other than the EPO oppositions, the significant changes will occur upon grant and thereafter. In particular, upon grant the applicant will be able to choose whether, for the 25 participating EU states, it will wish to obtain a unitary patent or a “traditional” European patent.

In the case of the unitary patent, this will be a single and indivisible right, which will require significantly fewer translations and the payment of a single annuity (whose amount is yet to be determined) for keeping the patent in force in all participating EU states. On other the hand, since the unitary patent is a single and indivisible right, in case of litigation it will allow to obtain preliminary injunctions and infringement decisions in all participating EU states by way of a single court action, but it will also stand or fall equally in all participating EU states by way, here too, of a single court action regarding its validity. Thus, while the cost and effect benefits may be significant, the risks should be carefully weighed as well before the unitary patent option is chosen.

As a reminder, the “traditional” European patent, which will continue to be available for the applicants who prefer this system, is a bundle of national rights. This will allow for more flexibility e.g. in terms of annuity costs depending on the countries where protection will really be desired throughout the life of the patent. As for litigation, at least for a certain period it will be possible to continue bringing actions relating to “traditional” European patents before the national courts of the EU countries of interest, as is the case now. Furthermore, the owner of a “traditional” European patent will be able to formally indicate that they do not want that patent to be subject to the new litigation regime. In such case, too, the litigation relating to such patent will have to take place in the national courts of the EU countries of interest. Thus, while this may maintain some of the legal uncertainty that has led the EU institutions to start working on a unitary patent package, European patents will allow for more flexibility in terms of the result of any litigation, and will allow, in some cases, to keep or revoke the monopoly at least in some countries, with the obvious advantages for the patent owner or third party, depending on the result achieved in each country.

In any event, while the Rules of Procedure of the new unified patent court are still being worked on, it appears that it will also be important for third parties wishing to revoke their competitors’ patents to keep in mind that they will continue to have the choice between an invalidity action (before the new court and/or national court) and an opposition (before the EPO, as is already the case now).

Depending on the specific circumstances of each case, it will be important for such third parties to choose the most suitable procedure, where the choice may depend on factors such as – to name a few – costs and reliability (at least initially) of the decisions of the new court when compared to the (by now very experienced) EPO instances, as well as other factors which will also become apparent when the new system will start operating.

The members of our firm will soon be giving seminars and lectures on the new system, to allow their clients and colleagues to familiarize themselves with it, and are of course available for any questions you may have already now regarding this important new development of European IP.

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