European Unitary Patent or National Routes: A Choice Must Be Made!

The entry into force of the European Unitary Patent is scheduled for grants after June 1, 2023, concurrently with the start of the Unified Patent Court. From this date onwards, following the examination procedure as already practiced by the European Patent Office, any applicant of a European patent application nearing grant will now have the choice between two completely different validation systems:

1. The “classic” validation of the European patent is granted in a selection of countries chosen from a list of 39 member states of the European Patent Office. In these chosen countries, the validated European patent is then equivalent to a national patent, and any associated disputes are handled by national courts.

2. The “unitary” validation of the European patent allows for obtaining a single title valid in all member states of the European Union and those of the European Patent Office that have ratified the agreement, currently 17 countries, eventually 25.

While the new system will simplify procedures for the applicant and significantly reduce costs to obtain coverage in most EU territories, it may also entail new risks, particularly the risk of simultaneous revocation of rights across the European territory in case of litigation. However, this risk argument is itself counterbalanced by the advantages of the new unified jurisdiction: a single simultaneous decision for infringement and damages across multiple countries!

In short, a one-size-fits-all approach is not always feasible, and the choice between the two options should be evaluated for each family or group of families.

The intricacies of this new system are complex and not yet fully set. The practical implementation of your choices should be guided by competent advisors.

What’s crucial for the holding organization is to have a thorough reflection beforehand, based on a global vision that takes into account various parameters such as costs, the strength of each title, strategy against competitors, target markets and territories, and the policy for valorizing IP assets.

The coexistence of the current European patent validation system with the new unitary patent system will offer various opportunities, but to leverage them, it’s more important than ever to have alignment between IP policy and corporate strategy.

Our software solution, PI Planner, allows for centralizing all technical, legal, financial, and strategic information regarding your portfolio. It enables segmenting your portfolio from different angles to identify relevant titles and ultimately helps you make the right choices for your organization!

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