EU on Fast Track Toward a Single Patent

On April 13—just one month after approval was given by the EU Council to proceed under enhanced cooperation—the European Commission (EC) has presented proposals for two regulations laying down the conditions for the procurement of a so-called unitary patent.

In contrast to the actual situation with a European patent, which requires expensive country-by-country validations, the unitary patent will allow companies and individuals to protect their inventions through a single patent within 25 member states. It will drastically lower the costs of patent protection in Europe, mainly due to a more beneficial translation system. The EC expects a reduction of up to 80 percent of the costs necessary for similar protection through the existing European patent. The EC press release with links to both EC documents can be found here.

The unitary patent will be embedded in the framework of the European Patent Convention (EPC) and shall be obtained through the European Patent Office (EPO). To render this legally possible, the EC refers to Part IX of the EPC, which allows a group of EPC contracting states to entrust the EPO with “additional tasks” in connection with patents, with effect throughout their territories. Accordingly, the participating states will have to entrust the EPO with the administration of the unitary patent, which shall include, according to the EC proposals, its registration, limitation and revocation and the collection of renewal fees. The European Union, however, will not need to join the EPO.

The proposals do not deal with another important aspect of Europe’s patent reform, namely the unified litigation system through the European Patent Court. Even though this is legally disconnected from the unitary patent and may proceed at its own speed, the EC acknowledges “that the creation of the unitary patent has to be accompanied by appropriate jurisdictional arrangements responding to the needs of the users of the patent system.” Commissioner Michel Barnier stated at the April 13^th press conference that a further proposed regulation on judicial arrangements, based on the March 8^th Court of Justice decision, would be announced in early May. But what happens if the unitary patent should enter into force before any such arrangements are reached between the parties? The judicial enforcement would consequently have to be implemented through the national courts within a still unknown and vague enforcement framework. It might be important for the success of the unitary patent to establish special rules, as it is questionable whether a user would opt for this kind of patent as long as there is no special court system in place.

Even though the first two proposals have now been transmitted to the Council and the European Parliament for adoption, there remain a few open issues that will require some time, negotiations and discussions to resolve.

We will continue to report on the latest developments surrounding a single patent system in the EU, which you can find here.

For more information, contact:
Frank D. Peterreins (; tel: +49(89)710-410-2-0 ) in our Munich office.
John B. Pegram (; tel: 212-765-5070 ) in our New York office.

© Copyright 2011 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this newsletter has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.

On March 10th, the EU Council approved a proposal that would permit the European Patent Office to grant a unitary (single) patent for most EU nations (the “EUP”). All EU nations except Italy and Spain have said they would participate. Unlike the failed Community Patent proposals, translation into a national language of each country would not be required at the time of patent grant. The European Commission has been working on an implementing regulation, which is expected to be published within two to three months. Establishment of the EUP is very likely within a year, because of the convergence of political will and industrial support for an EUP less expensive than the current national patent system. The EU Council press release with links to the council documents is here.

On March 8th, the EU Court of Justice (ECJ) issued an opinion advising that a proposal for a European Patent Court (PC) that would include both EU and non-EU nations, and would not be subject to ECJ oversight, would be inconsistent with the foundational EU treaties. However, paragraph 82 points to tri-national Benelux Court of Justice as an arrangement consistent with the EU treaties, suggesting that an EUPC with only EU members would be legally acceptable. Here are links to the ECJ press release and opinion.

In a press release following the ECJ Opinion, the EU Commission welcomed the opinion, said it would work quickly to find an appropriate way going forward for the patent litigation system and said that the opinion should have no impact on the unitary EUP proposal. That press release is here. Because the EUPC proposal will lag behind the EUP proposal and the EUPC offers less of a financial advantage for European industry, the political momentum probably will drop and may not be sufficient to clear the last hurdles for a EUPC.

We will report on developments on our new EU Patent System Developments page.

For further information, contact:
Frank D. Peterreins (Peterreins@fr.com; tel: +49(89)710-410-2-0 ) in our Munich office
John B. Pegram (; tel: 212-765-5070 ) in our New York office

© Copyright 2011 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this newsletter has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.