The Agreement on the Unified Patent Court (AUPC) entered into force on June 1, after an eventful process of years plagued with controversies. What consequences will it have? We explain it.
What is the unitary patent?
The unitary patent is a system that allows obtaining a single patent valid in several countries of the European Union. With the unitary patent, inventors and companies can obtain unique and uniform protection for their invention in those countries of the European Union that have ratified the Agreement on the Unified Patent Court (AUPC), by submitting a single application to the European Patent Office (EPO). This patent is inspired by the successful model of the community trademark although, for various reasons, it has not succeeded in getting all EU countries to adhere to it.
But isn't there already a European patent?
The European patent, also known as the "classic" European patent, is a system managed by the European Patent Office (EPO) in Munich. This allows applicants to obtain a patent that is valid in multiple European countries, which are members of the European Patent Convention (EPC). However, for the European patent to be valid in each country, a validation process is required in each of them and, in some cases, translations of the patent document. This implies additional costs and procedures compared to the unitary patent.
How will the two systems coexist?
In order to try to harmonize both systems, which establishes that after the publication of the grant of a European patent in accordance with the European Patent Convention (CPE), a "classic" European patent, the holder will have one month to request unitary effect.
The Unitary Patent Court (UPC) becomes the new competent court to decide on the infringement and validity of unitary patents, complementary certificates of protection and "classic" European patents. Thus, the UPC will have exclusive jurisdiction, both for European patents with unitary effect and for "classic" European patents, in which an option to exit this jurisdiction called "opt-out" has not been exercised. If this mechanism is exercised, the national courts will continue to have jurisdiction, both in matters of infringement and validity. This will only be possible when a third party has not brought an action against the patent in question in the UPC. The possibility of exercising the "opt-out" will be maintained for a period of seven years after the entry into force of the AUPC.
And what about Spain?
Spain is not part of the unitary patent system, so foreign entrepreneurs wanting valid patents in Spain will need to take the traditional validation route. This is a controversial decision that other European countries such as Poland and Croatia have also taken and which derives mainly from the non-inclusion of Spanish as a working language in the system. This exclusion may seem negative from the point of view of Spain's integration into the European economy, but it also results in a certain degree of protectionism that may be positive for small and medium-sized companies dedicated to innovation in Spain. Thus, Spanish companies will not have to face a market full of competitors with valid patents which are valid locally but drafted exclusively in English, French or German. Nor will they have to assume the high costs associated with unitary patent litigation - for example, to sue or defend against a unitary patent infringement claim, it is necessary to pay an initial court fee of 11,000 euros, in addition to another fee depending on the value of the litigation (and, of course, the costs of lawyers).
In any case, the fact that Spain has not ratified the AUPC does not mean that Spanish holders cannot apply for a unitary patent if they so wish, which will take effect in the other 17 countries that have already ratified it.
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Adrián Esquivel
www.emps.es