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Client Advisory | May 2011 The emergence of a unitary patent right in Europe is exciting news for applicants of European patents In Europe, patent protection can be obtained either through the national patent offices of the Member States, which grant national patents, or through the (EPO). Once a European patent is granted by the EPO it effectively becomes a bundle of national patents. The national laws of most European Member States require a translation of at least part of the European patent into a local language. This step is known as ‘validation’. The validation step can incur very high costs for applicants and is complex. The has recently proposed to create a European patent that has unitary effect in all those Members States that elect to participate. This proposal will eliminate the costly translation requirement. Whilst this is very good news for applicants (and for Europe), the unitary European patent is still at the proposal stage and is still likely to be some years away from coming into force.

The overall cost of validating an average the current European patent system up European patent can reach about 12,500 until grant but, shortly after grant, the pat- EUR (£11,000 or $18,000) if validated ent can be registered as a European patent in 13 Member States and over 32,000 with unitary effect rather than as a bundle EUR (£28,000 or $45,000) if validated in of national patents. The new provisions will all Member States. Despite the recogni- therefore compliment the existing European tion of the competitive disadvantage that patent system and so the applicant can still this brings to Europe, the elect to validate the patent as a bundle of (EU) has not been able to establish uni- national patents if desired. John Lloyd, Partner tary patent protection, despite many failed attempts. The proposals On 13 April 2011 the European Com- Where the specification of a European pat- mission presented proposals for two regu- ent with unitary effect has been published lations related to the ‘unitary patent’1. by the EPO, no further translations are Twenty-five Member States are currently required other than a translation of the engaged in enhanced co-operation to claims into the other two official languages establish unitary patent protection with the of the EPO. Further translations are only notable exception of and Spain2. The requested during a transitional period or in unitary patent is not expected to change case of a dispute.

1 See http://ec.europa.eu/internal_market/indprop/docs/patent/com2011-215-final_en.pdf and http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=COM:2011:0216:FIN:EN:PDF 2 The Member States are , , , , , , , the , , , , , , , Ireland, , , , , the , , , , and . 2 | The emergence of a unitary patent right in Europe is exciting news for applicants of European patents

Transitional period recognised that the unitary patent system During the transitional period, a request for would be much more effective if enforce- unitary effect must be accompanied by the ment was decided through a central court, following: rather than through court proceedings in (i) a full translation of the specification of each Member State. The decision from the the patent into English where the lan- EU Court of Justice did make reference to guage of the proceedings before the EPO the Benelux Court (which is a court common One advantage is that is French or German; or to Belgium, the Netherlands and Luxem- wider use of the patent (ii) a full translation of the specification of bourg) which ensures the uniform interpre- the patent into any official language of tation of common legal rules amongst these system is expected in the participating Member States that is countries and is situated within the judicial Europe due to the lower an official language of the EU where the system of the European Union. It is possible language of the proceedings before the that the unitary patent could be supported costs. EPO is English. by courts which have jurisdiction within This transitional period will terminate as more than one Member State. One disadvantage is that soon as high quality machine translations into all official languages of the EU are The advantages a unitary patent right available. It is considered that the machine The biggest advantage of the unitary patent can only be revoked as a translations will be developed within will be the reduction in costs associated approximately 12 years. To this end, the with validating the European patent. Some whole unlike the current EPO recently signed a long term non-exclu- commentators have predicted that this system where revocation sive agreement with Google Translate. cost might fall to as low as 700 EUR (£600 in one contracting or $1000) once the transitional period has Dispute passed. This will represent a significant state leaves the patent In the case of a dispute concerning a Euro- reduction in the cost of securing European surviving in other states. pean patent with unitary effect, the patent patent protection and should place Europe proprietor will have to provide a full transla- on a much more competitive footing with tion of the patent into an official language other countries. of the participating Member State in which either the alleged infringement took place The disadvantages or in which the alleged infringer is domi- The biggest disadvantage with the unitary ciled. The patent proprietor will also be patent proposal is that a unitary patent required to provide, at the request of the can only be transferred, limited, revoked competent court dealing with the dispute, or allowed to lapse in respect of the Mem- a full translation of the patent into the lan- ber States as a whole. So if the patent is guage of proceedings of that court. Such deemed to be invalid in a single Member translations will have to be provided at the State then this will mean that the patent expense of the patent proprietor. will be lost in every single Member State. A single annual renewal fee will be pay- This contrasts sharply with the current Euro- able under the proposals and the EPO will pean patent system in which the loss of the oversee the administration of the unitary patent in one Member State still leaves the patent. patent intact elsewhere. Whilst this may be of concern to some applicants it should be And A European Patents Court? remembered that the unitary patent will run Perhaps not. alongside the existing patent system. Thus, Whilst it would be highly desirable for decisions can be made on a case by case the unitary patent to be supported by a basis whether or not to pursue the unitary centralised European Patents Court, the patent route and benefit from the lower establishment of such a court has recently cost versus pursuing the conventional Euro- been held to be incompatible with EU law pean patent route which will incur higher according to the EU Court of Justice.3 This cost but arguably will provide more robust is certainly a set back since it is generally protection.

3 http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=EN&Submit=Submit&numaff=Avis%201/09 3 | The emergence of a unitary patent right in Europe is exciting news for applicants of European patents

Conclusion The proposals for the unitary patent are to be welcomed by applicants of European patents in light of the significant cost sav- ings that they will bring. The possible lack of complementary enforcement is a prob- lem but is unlikely to hold up the progress of the unitary patent. The proposals will now be considered by the and Parliament for adoption. This, however, might still take some time.

This advisory is for guidance only and is not intended to be a substitute for specific legal advice. If you would like further information, please contact the Edwards Angell Palmer & Dodge LLP attorney responsible for your matters or one of the attorneys listed below: John LLoyd, Partner +44 20 7556 4255 [email protected]

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