Europe Continues Progress Toward Unitary Patent and Unified Patent Court

For decades, inventors have been able to file a single patent application in the European Patent Office (“EPO”) in order to pursue protection across multiple countries in Europe. However, at the end of the examination process, a patent application granted by the EPO still must be validated in each of the countries in which a patent owner wishes to secure enforceable patent rights. As part of such validation, the application often must be translated into the language of each country of interest, and further fees are assessed. Assuming the patent owner advances through validation, the patent owner will be awarded multiple patents, one in each selected country. Each of these awarded patents is independently enforceable. As a result, if a patent owner successfully enforces its patent rights in one country, that does not necessarily mean that the patent owner will have the same success in another country. For example, if a patent owner validated its patent rights in Germany and France, it is possible that the patent owner could successfully pursue an infringement action in Germany against a competitor, but then subsequently lose an infringement action against the same competitor in France, as each country applies its own national laws to the dispute. In short, while pursuing and securing patent rights via the EPO undoubtedly streamlines examination and significantly reduces the cost of pursuing and securing patent rights in Europe, there are still inconsistencies and inefficiencies in the subsequent enforcement of those patent rights.

In an effort to address such inconsistencies and inefficiencies, patent owners, trade associations, and other stakeholders have been working for many years to establish a “Unitary Patent,” which would be effective across multiple countries in Europe. In connection with such a Unitary Patent, there has been a corresponding effort to establish a Unified Patent Court, which would serve as a forum for litigating disputes involving Unitary Patents. It was very difficult to muster the collective political will to implement a Unitary Patent system, and legal challenges often slowed the effort. Indeed, many who have supported or closely followed the process had concluded that the effort was doomed. However, it now appears that the remaining obstacles have been overcome (although a few European countries have indicated that they will not participate), and the EPO is preparing to move forward later this year. There are still certain issues that will need to be resolved before a final timeline for implementation is established, but if and when the new systems are launched, patent applicants will have to acquaint themselves with the new options and reconsider how they pursue and enforce patent rights in Europe.

It is also important to recognize that, upon implementation, existing European patents will also be subject to the jurisdiction of the Unified Patent Court, unless the patent owner chooses to opt out and remove a particular patent from the jurisdiction of the Unified Patent Court. If a patent owner were to opt out with respect to a particular patent, any dispute would be litigated as before in an individual country, applying the national law of that country. There are many factors to be considered with respect to the opt-out decision for a particular patent, including the value of the patent and whether a patent owner is willing to expose the patent to the risk of a decision that would be effective across all participating countries. If nothing else, it is important for patent owners to be aware that major changes are coming to the patent system in Europe, which will not only affect future patent strategies, but could also affect their existing European patent portfolios.

The attorneys of Stites & Harbison, PLLC regularly advise clients with respect to domestic and foreign patent strategy. The firm also maintains relationships with an extensive network of foreign patent attorneys who can advise and provide additional guidance in specific jurisdictions of interest. For questions or comments, please contact the author or any of the other registered patent attorneys in our Intellectual Property & Technology Service Group.