Patent protection: What will change as of 1 June 2023? | In Principle

The European unitary patent and the new patent court: What should Polish businesses know, and is there anything to fear?

In Europe, discussions on unifying patent law have been ongoing since the 1960s. The first step in bringing legislation of countries closer together and simplifying the procedure for establishing protection in several European states was the signing of the European Patent Convention in 1973. Poland acceded to the convention effective 1 March 2004.

In 2013, another milestone was the signing of the Agreement on a Unified Patent Court by 25 member states of the European Union. It was intended to make it possible to obtain a unitary patent in all European Union member states, modelled on the existing rights to an EU trademark or Community design. Despite its initial enthusiasm for this initiative, Poland did not decide to join the agreement. Apart from Poland, among the members of the European Union, Spain and Croatia have not signed the agreement, while Cyprus, Czechia, Greece, Hungary, Ireland, Romania and Slovakia have signed the agreement but not yet ratified it.

Despite signing of the agreement in 2013, to date it has not entered into force. The agreement will not take effect until 1 June 2023, as one of the conditions for its entry into force was ratification by Germany, and that process was prolonged due to doubts regarding the constitutionality of the agreement.

Since Poland has not acceded to the agreement, it might seem irrelevant to entities based in or operating in Poland. Nothing could be further from the truth. Below, we discuss point-by-point what will change from 1 June 2023 in the patent protection system. But first we will review how European patent protection currently works.

“Classic” European patents: The current situation

The European Patent Convention simplifies the process of filing patent applications. The applicant files for a European patent with the European Patent Office (EPO), which verifies whether the invention described in the application meets the prerequisites for granting a patent and issues a decision. For a solution covered by a patent application to be protected in the states that have joined the convention, the patent must additionally undergo a validation procedure in the national patent office. Depending on the provisions adopted by the given state, submission of a translation into the official language of that state and payment of official fees may be required. These requirements are foreseen in the Polish law, requiring a translation into Polish to be submitted within three months after the EPO publishes information on granting a European patent (more information on the procedure is available at the Polish Patent Office website).

Once validated, a European patent causes exactly the same effects as a patent granted by the national patent office in the given territory. As a patent “lives its life” in each of the states where protection has been granted (where it has been validated), sometimes national authorities issue contradictory decisions regarding, for example, the validity of the right, in the event of initiation by a third party of patent invalidation proceedings. This contradiction may result from a different interpretation of various prerequisites of patentability by the authorities of each state, as proceedings for invalidation of a European patent are conducted on the basis of national acts and not on the basis of the convention. The case of enforcing a patent right looks similar—to obtain protection, the right holder must bring separate proceedings in each of the states where the right has been infringed. Also in this case, situations may occur where one court finds that a patent infringement took place and grants protection, while another finds that the defendant’s action did not fall within the scope of the patent.

What will entry into force of the agreement change?

We wrote on our portal about the plans to implement a unitary patent across the territory of EU member states shortly after the discussion on the issue became heated in the EU forum.

The legal framework for the European unitary patent system is formed by:

• Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection
• Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements
• Agreement on a Unified Patent Court of 2013.

So far, the agreement has been ratified by 17 countries and will be in effect as of 1 June 2023 in the territory of Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. Poland has not signed the agreement, although it has joined enhanced cooperation in the field of unitary patent protection and the foregoing regulations apply to it.

Pursuant to the aforementioned acts, an application for a unitary patent is to be submitted to the EPO in one of three languages: English, French or German.

A unitary patent granted by the EPO will automatically apply in all states that have joined the agreement, without the need for validation and translation into individual national languages. Such a patent can be limited, transferred, annulled or expire only with respect to the territory of all member states participating in the system. It will be similar with the decisions issued in patent infringement proceedings—they will also automatically apply in all states where the unitary patent enjoys protection. The newly established Unified Patent Court will rule on patent infringement and validity. At the same time, the right holder will be able to license the use of the patent with regard to all or selected territories of the participating member states.

The right holder will have the right to choose whether its patent has unitary effect

The “classic” European patent will be maintained, and right holders will be able to choose whether their patent is to have unitary effect.

Once a European patent is granted by the EPO, the applicant will be able to apply for granting unitary effect in the states participating in the agreement. At the same time, the same patent might be validated in other states that have not ratified the agreement. An application for “unitary effect” registration must be filed with the EPO no later than one month after the date of publication of information on granting the patent in the European Patent Bulletin.

Unitary effect can be granted to all European patents granted after entry into force of the agreement. This means that an application for unitary effect can be filed regarding patent applications filed on or after 1 June 2023, but also regarding applications currently pending before the EPO where a patent decision is published in the European Patent Bulletin on or after 1 June 2023.

Importantly, to enable applicants to obtain a unitary patent with regard to solutions examined by the EPO before the relevant legal acts enter into force, the EPO has provided for two interim measures:

1. The applicant may file a request to delay the issuance of a patent decision so that the decision is issued after the agreement enters into force, which will allow the applicant to file an application for unitary effect
2. The applicant may file an application for unitary effect before the system is launched.

The possibility to request a European unitary patent will allow right holders to save the costs of validating a patent in selected states and preparing translations into official languages. This can also mean savings in patent maintenance fees.

Pursuant to Regulation 1257/2012, a unitary patent is to be governed by the law of the state in which the entity filing the patent application has its registered office or place of residence on the date of filing or which is the place of conducting business activity of that entity, provided that this place is located in a state participating in enhanced cooperation where the patent has unitary effect. If the applicant is from outside the states participating in the agreement, the granted patent will be governed by German law.

Poland is participating in enhanced cooperation in the field of creating a unitary patent protection system, but has not joined the agreement. Therefore, a unitary patent granted to an entity from Poland will be treated as a German patent or a patent of another state participating in the agreement, if the Polish entity conducts activity there.

In the case of subsequent transactions involving a unitary patent, the patent will not change its status but will be treated as a patent granted under the law of the state from which its first owner came (M. Swierczyński, “Unitary patent system: Issues of jurisdiction and applicable law,” in A. Tarwacka (ed.), Iura et negotia (Warsaw: Cardinal Stefan Wyszyński University, 2015)).

The right holder will be able to decide whether the Unified Patent Court is to have jurisdiction over “classic” European patents

As of 1 June 2023, the Unified Patent Court will rule on disputes involving both “classic” European patents and unitary patents.

Under the existing rules, the agreement provides that for “classic” European patents, parallel jurisdiction of the Unified Patent Court and national authorities will apply during a transition period (lasting 7 years). This means that the patent holder will be able to pursue an infringer before the Unified Patent Court (under the new rules) or a national court (under the existing rules). Also, an alleged infringer will be able to choose whether to seek to invalidate the patent as before, before the national authorities, or submit the dispute to the jurisdiction of the Unified Patent Court. In principle, after the end of the transition period, the Unified Patent Court will become exclusively competent to resolve disputes involving both unitary patents and “classic” European patents.

However, the agreement provides that holders of “classic” European patents filed/granted prior to entry into force of the agreement or filed/granted during the transition period will be able to choose whether they wish to exclude their patents from the jurisdiction of the Unified Patent Court. Such a decision will result in disputes over these patents still being ruled on exclusively by national courts and authorities, just as they were before the agreement entered into force.

After the transition period, the Unified Patent Court will have exclusive jurisdiction over “classic” European patents in force in the territory of the states participating in the agreement:

• Which were reported after the end of the transition period

• Which were filed/granted prior to the end of the transition period and against which, prior to the end of the transition period, the right holders did not opt out of the jurisdiction of the Unified Patent Court.

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Example

A Polish business holds a European patent validated in Germany, which was granted before the Agreement on a Unified Patent Court entered into force.

The holder can choose whether, in the event of infringement of its patent, the alleged infringement (and consequently also the validity of the patent) can be ruled on by both the Unified Patent Court and the relevant national courts and authorities, or, as has been the case so far, only by the relevant courts and national authorities in Germany.

Here the Polish holder did not file a request to opt out of the jurisdiction of the Unified Patent Court. Therefore:

• During the transition period, proceedings can be held both before the Unified Patent Court and before national authorities
• After the end of the transition period, proceedings relating to the patent can be held exclusively before the Unified Patent Court.

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Disputes concerning infringement and validity of a European patent validated in states not participating in the agreement (e.g. Poland), until that state’s eventual accession to the agreement, will be resolved under the current rules, i.e. in the case of Poland, before the Warsaw Regional Court (infringement) and the Polish Patent Office (invalidation).

It is possible to opt out of the jurisdiction of the Unified Patent Court either during the transition period or now. Indeed, a “sunrise period” is provided for, during which owners of “classic” patents can apply for an opt-out clause for granted European patents and published applications, to “switch off” the jurisdiction of the Unified Patent Court over those patents. The sunrise period runs 1 March – 31 May 2023. A request to switch off the jurisdiction of the Unified Patent Court can also be filed later, but only when no proceedings have yet begun before the Unified Patent Court. If a patent case is pending before the Unified Patent Court, the litigants can no longer opt out of the jurisdiction of the court. The opt-out, once made, will be effective for the entire duration of the patent right, but can be revoked if no proceedings have been initiated before the national authorities. Once the opt-out clause is withdrawn, it will not be possible to reapply for it.

A Polish entity can be sued before the Unified Patent Court, and can also challenge the validity of patents before that court

An entity from a state not participating in the agreement (e.g. Poland) that infringes a European unitary patent will be liable for infringement of those rights before the Unified Patent Court. In the case of infringement of a “classic” European patent, where no opt-out has been taken from the jurisdiction of the Unified Patent Court, the defendant can be sued before the Unified Patent Court or, as before, before a foreign national court. As a defence, the defendant will also be able to file a claim for patent invalidation before the Unified Patent Court.

In the case of a “classic” European patent, because in patent infringement cases the infringer is as a rule sued in a court of the state where the patent is in force, granting jurisdiction to the Unified Patent Court will not be a groundbreaking change for businesses. Indeed, Polish entities could already be sued in foreign courts. However, it should be borne in mind that proceedings before the Unified Patent Court may prove more costly.

The case is different for a unitary patent. The effect of a ruling issued by the Unified Patent Court in the case of unitary patents will be more momentous, as it will automatically apply to all states participating in the agreement (meaning a ban of certain activities will automatically apply to the territory of all states that have joined the agreement, i.e. currently 17 states).

What will not change?

1. European patents can still be granted in “classic” form under the current rules and validated in individual states of protection.
2. European patents will still have to be validated at the Polish Patent Office to have effect in Poland.
3. Proceedings for infringement and validity of a “classic” European patent validated in Poland will be conducted under the current rules before the Warsaw Regional Court (in the first instance) and before the Polish Patent Office and administrative courts.
4. Proceedings for infringement of a “classic” European patent in the territory of a state participating in the agreement can still proceed under the existing rules during the transition period and after the end of the transition period, if the owner opted out of the jurisdiction of the Unified Patent Court.
5. A decision to invalidate a unitary patent will not directly affect the validity of an identical “classic” European patent validated in Poland. However, it should be expected that such a decision will affect the decisions in proceedings pending before the Polish Patent Office and courts.

What will change as of 1 June 2023?

1. An applicant for a European patent will be able to choose whether the European patent is to have unitary effect, or will apply under the existing rules as a “classic” European patent.
2. The Unified Patent Court will have exclusive jurisdiction over disputes concerning the infringement and validity of unitary patents.
3. In principle, the Unified Patent Court will also have jurisdiction to settle disputes over “classic” European patents in states participating in the agreement.
4. The holder of a “classic” European patent filed or granted prior to entry into force of the agreement or during the transition period will be able to opt out of the jurisdiction of the Unified Patent Court. It will not be possible to opt out of the jurisdiction of the Unified Patent Court for unitary patents.
5. If the holder of a “classic” European patent does not file an opt-out request before patent infringement or invalidity proceedings begin before the Unified Patent Court, the court will have jurisdiction over those cases. The national authorities will also have jurisdiction over those cases during the transition period.
6. A request for an opt-out clause can be submitted now, during the “sunrise period.”
7. After expiration of the transition period, the Unified Patent Court will only have jurisdiction to rule over matters regarding “classic” European patents filed after that date in states participating in the agreement and patents over which the owner has not opted out of the jurisdiction of the Unified Patent Court.
8. An entity from a state not participating in the agreement can be sued before the Unified Patent Court and will also be able to seek invalidation of a “unitary” patent or a “classic” patent before the Unified Patent Court.

Ewa Nagy, attorney-at-law, Intellectual Property practice, Wardyński & Partners