As you may have heard, European patents having unitary effect (so-called unitary patents) will become available before long. Over the past decade we have been expecting the Unitary Patent System to come into effect „shortly“, but there have been many unexpected delays, unfortunately. The exact date of entry into force is still unknown, but there is increasing evidence that it might happen later this year or early next year.
Generally speaking, unitary patents will make it possible to get patent protection in a fixed cluster of more than 20 member states of the European Union including e.g. Austria, Denmark, Finland, France, Germany, Italy, Netherlands, Portugal and Sweden (cluster of participating states). A few member states of the European Union as well as those European states that are no members of the European Union do not participate, e.g. Norway, Spain, Switzerland, Turkey, and Great Britain (for details see e.g. https://www.epo.org/applying/european/unitary.html).
Unitary patents will become an alternative to conventional European patents (so-called bundle patents). The distinction between conventional bundle patents and new unitary patents becomes relevant at the validation stage, i.e. once a European patent application has proceeded to grant. Instead of separate validation in selected individual states leading to a conventional bundle patent, you may then jointly validate in the cluster of participating states leading to an unitary patent. For the cluster of participating states, both options will coexist. For all other states, the conventional bundle patent will be the only option. Examination proceedings as well as opposition proceedings before the European Patent Office will remain unchanged. Depending upon the number of states where you would like to validate, a unitary patent may be less expensive than a bundle patent.
For the cluster of participating states, patent infringement proceedings as well as nullity proceedings related to unitary patents will be heard before a new supranational court that is currently being established (Unified Patent Court, for details see e.g. https://www.unified-patent-court.org/). A unitary patent is a single patent right, not a bundle of national portions. Thus, in contrast to a conventional bundle patent, a unitary patent may be invalidated in a single nullity proceeding. Litigating a unitary patent before the new court in a single proceeding will likely be less expensive than separately litigating a bundle patent before the national courts in each validated state.
From a practical point of view, the following three time stages may be considered:
1st: forthcoming months;
2nd: transitional period; and
3rd: period after the Unitary Patent System has come into force.
In the following, we would like to address only the 1st time stage, i.e. the forthcoming months:
While the new court is being established together with the Unitary Patent System, the new court shall be competent with effect for the cluster of participating states for litigation
– not only of unitary patents,
– but additionally also of all conventional bundle patents.
Therefore, all existing European patents (which are all bundle patents) as well as all future bundle patents will be litigated before the new court in principle. This is a significant change.
No case law by the new court has been established yet, e.g. on the doctrine of equivalents, and thus there will be a considerable degree of legal uncertainty, especially during the first years until the general framework of jurisdiction will become recognizable.
For a transitional period of 7 years, patent proprietors of existing bundle patents and of new bundle patents are therefore given the opportunity to „opt-out“, i.e. to decide that the new court shall not yet become competent for litigation of their bundle patents. In case of an „opt-out“, the current practice will still apply, i.e. litigation will take place separately before the national courts in each validated state.
For unitary patents, however, no „opt-out“ will be available, i.e. the competence of the new court is set.
In view of the above, you may consider „opting-out“ your existing bundle patents, either all of them or a selection thereof. The procedure to achieve „opt-out“ is rather simple. We have access to a register at the new court and once the register has been activated, we can easily „opt-out“ any of your bundle patents we are entrusted with.
In view of the legal uncertainty in absence of established case law, „opt-out“ seems generally advisable for any existing bundle patent. However, if you plan to enforce one of your existing bundle patents against an infringer, it might be cheaper to involve the new court. Importantly, once you have „opted-out“ a bundle patent, this can be undone at any time (unless proceedings are pending), i.e. the competence with respect to litigation may be switched back from the national courts („opt-out“) to the new court (no „opt-out“). We generally recommend „opting-out“ all your existing bundle patents, at least for a while (for details see e.g. https://www.unified-patent-court.org/faq/opt-out).
„Opting-out“ is not yet possible. Nonetheless, it would be helpful if you started considering whether you are interested in „opting-out“ any of your existing bundle patents.
If you have questions or need additional information, please let us know.