The European patent is the patent that is currently granted in accordance with the provisions of the European Patent Convention (EPC). Once granted, it is transformed into a “bundle” of national patents valid in countries that the proprietor chooses at the time of grant from among those that adhere to the EPC.
On the other hand, the patent with unitary effect is a European patent which, at the time of grant, does not become a “bundle” of national patents, but instead remains “single” and is valid in all the countries that adhere to the Unitary Patent system. It will still be possible to validate the patent in the countries not adhering to the Unitary Patent system, similarly to what is required for European patents.
At the time of grant, the proprietor can choose between a European patent and a unitary patent.
To date, it is not yet possible to apply for unitary patents; the Unitary Patent system will enter into force after the entry into force of the UPC.
*Provided the patent application was filed on March 1, 2007 or later.
Yes, at least in an initial period this is possible. The proprietor of a European patent or patent application can file a request for renunciation, known as an “opt-out”.
The opt-out is a waiver request, a means by which the proprietor of a European patent or patent application can remove them, individually, from the jurisdiction of the Unified Patent Court. In other words, all European patent applications and European patents with a filing date of March 1, 2007 or later will automatically be subject to the jurisdiction of the UPC, unless a waiver request is submitted.
In practice, the opt-out allows you to maintain the current situation and ensure that the possible nullity and infringement of your patent or patent application can only be discussed before a national court.
The opt-out cannot be requested for unitary patents, which will automatically be subject to the exclusive jurisdiction of the Unified Court.
Yes, there are limits and the proprietor cannot change their mind again. It is possible to renounce the opt-out only once. If the proprietor of the European patent or patent application revokes the opt-out, they can no longer ask for it in the future.
Another situation in which there is no turning back is one in which legal proceedings in a national court have already begun.
The major criticality to consider concerns the principle by which an SPC follows the European patent on which it is based. Therefore, if the European patent were to be centrally revoked, the SPC would lapse in all UPC member states.
Once again, if the European patent and the SPC were owned by two different entities, they would have to find an agreement and decide whether to give up the UPC or be part of the new system.
The advice for a proprietor of a European patent or a European patent application is not to decide independently, perhaps only on the basis of a comparison of costs. The choice could turn out to be wrong, penalizing and, in some conditions, irreversible. It is risky to make a hasty decision.
The advice is to make the decision after an extensive and broad comparison with your European Patent Attorney who will be able to provide their point of view and the latest information available or legislative news.