A reform of European patents has been long awaited: here we are! On 1 January 2023, a new type of European patent will come into effect: the European patent with unitary effect. But what will this change?

The current situation

At present, a company has the choice between filing :

• a patent in each country of interest. In this case, the text of the patent is filed in each of the languages of the chosen countries and the company pays as many annual fees to maintain it as there are countries in which protection is provided.
• a European patent which consists of a centralised procedure covering 38 countries until grant. It is at this point that the company will have to choose the countries in which the patent will take effect (validations). As with the previous option, it will have to pay the annual fees of the countries in which the patent is operational and possibly provide a translation of the claims or the text of the patent.

New options

With the new European patent with unitary effect, the company is free from the choice of countries of application. It will in fact be active in the countries of the European Union that have ratified the reform, 17 at present. And if the company wants to validate its patent in other European countries than the countries that have signed this reform at the time of grant, it will have to file traditional validations in parallel.

The European patent with unitary effect is not automatic. It must be expressly requested at the latest within one month of its grant. But unlike the classic European patent, the procedure is simplified because no translation will be necessary (apart from an English version if the original text is not in English or a version in one of the European languages if the original text is in English during a transitional period of 6 years).

Finally, the company will only have to pay an annual fee, which corresponds to the sum of the annual fees of the 4 countries in which European patents are most validated, i.e. France, Germany, the Netherlands and the United Kingdom .

The other novelty of this reform is the constitution of a new jurisdiction competent for all European patents (classic and unitary): the Unified Patent Court (UPC). All disputes will automatically go before this court:

• Advantage: decision times will be much faster (about 1 year).
• Disadvantage: in the event of an unfavourable decision, the patent will be lost for all the territories of application, whereas in the case of a classic European patent, the loss of the patent will be decided on a case-by-case basis by the national jurisdictions, with the possibility of maintaining it in certain countries and losing it in others.

There is one exception, however: during the 7-year transitional period and for classical European patents only, it is possible to file a request to derogate from the exclusive jurisdiction of the JUB.

With the forthcoming arrival of this new unitary patent, companies will have to make strategic choices regarding the management of their IP. Do not hesitate to seek advice!

Contact: Bérénice Kimpe - berenice.kimpe [at] xylofutur.fr

This article was written following the webinar organised by Agri Sud-Ouest Innovation of 7th of July 2022, with the intervention of Ms Celaire from Cabinet Regimbeau.