Despite numerous setbacks and delays - most recently a June 2017 decision by the German Constitutional Court that prevents Germany from adopting the Unitary Patent System, at least temporarily - optimists are confident that the new Unitary Patent System will come into effect in December 2017. Nearly all the members of the European Union have agreed to the Unitary Patent System. This system creates a Unitary Patent which is enforced in a new Unitary Patent Court. Consequently, U.S. inventors and practitioners need to be aware and prepared for the upcoming changes.
Currently, there are two options available to inventors who seek patent protection in Europe. The first option is to file an application in the patent office of each country where protection is sought. The second option is to apply for a European patent with the European Patent Office. Under the second option, if the patent is granted, the applicant chooses in which countries they desire patent protection, pay the appropriate fees for those countries, and modify the claims pursuant to each country’s request. The Unitary Patent System gives the inventor a new option. The inventor files an application at the European Patent Office and, if the application is granted, the inventor can select the patent to be issued as a Unitary Patent. A Unitary Patent protects the inventor’s rights in every nation that agrees to the Unitary Patent System. Currently, twenty-five nations plan to become members of this system including major players such as Germany, the United Kingdom, France, and Italy.
As to protecting their patent rights in Europe, U.S. Inventors will have to answer new questions. The threshold question is: which of the above three options should the inventor choose? The advantages of obtaining a new Unitary Patent are clear: it is less expensive, the protection is broader, and the application is simpler. However, the disadvantages of obtaining a Unitary Patent are subtle. While a Unitary Patent carries broader protection, it also creates a larger group of interested parties who might challenge the patent’s validity. These disadvantages take the form of more expensive and frequent litigation in an effort to protect one’s rights.
Secondly, current patent owners will have to decide whether they want to “opt out” of the newly created Unitary Patent Court. By opting out, an inventor retains the ability to enforce their current patents in each nation individually. Alternatively, if an inventor chooses to enforce their patent through the Unitary Patent Court, they would only need to file one proceeding in a central court. Just as there are pros and cons in obtaining a Unitary Patent, there are pros and cons to enforcing a patent in the Unitary Patent Court. For example, the advantages include a single proceeding where the holding would be recognized in all member states. It is less expensive and easier to do. On the flip side, the Unitary Patent Court has new rules and procedures and very little precedent. While the Unitary Patent Court is more efficient, if an inventor loses their case at this stage they lose protection in all member states. However, if an inventor wishes to opt out, the process to do so is expected to begin in September 2017, before the Unitary Patent System goes into effect.
In conclusion, U.S. inventors need to be informed about the new laws and happenings in European patent law. The decision on which route to take in protecting an inventor’s patent rights is an important and complicated one. Thus, awareness of the pros and cons of obtaining a Unitary Patent is the first step to making an informed decision.