A European patent is a platform from which a person or business may be granted exclusive rights to an invention in multiple countries across Europe. The European Patent Office (EPO) examines and grants European patents. Importantly, the European patent is not a single registration or common patent covering Europe. The new Unitary Patent is about to provide that right, however.
For most of our clients, who are US applicants, a European patent application is a type of international application. They can pursue a European patent in one of two ways: by filing a European patent application during the national phase of a PCT application, or by filing directly with the EPO claiming Paris Convention priority to an earlier-filed US patent application. There may be different strategic and financial reasons for choosing one of these routes over the other.
Either way, the EPO receives the application. The EPO is an intergovernmental organization that processes patent applications and grants patents for inventions in Europe. Located in Munich, it receives new applications, searches and reviews them centrally, issues rejections, and then grants the European patent if the owner overcomes all issues.
After the EPO grants the European patent, the patent owner has the right to validate it into individual countries. This is essentially rubber-stamping for a fee. The validation fee must be paid on a per-country basis, and the cost ranges considerably depending on the country without real rhyme or reason. Additionally, in some countries, the patent owner must also pay for translations into the local or designated language when validating. Once the appropriate fees are paid, the country issues a local patent.
Historically, the European patent system has operated according to the above. However, soon, applicants will be able to elect that their European patent become a Unitary Patent. The Unitary Patent is a years-long project that comes into existence in June 2023. If applicants choose the Unitary Patent route, their single patent will be enforceable at the Unitary Patent Court, a single forum applying common law across European member states. And European patents that have been granted prior to this will fall under the Unitary Patent Court’s jurisdiction unless the owners opt out.
The European patent has some drawbacks. Once the European patent is validated, the patent owner has the responsibility of paying maintenance or renewal fees in each validated country to keep that country’s patent alive. This can be an expensive endeavor, and is one reason the Unitary Patent was proposed. Moreover, one large disadvantage is that the validated countries, while having similar patent laws, do not have the same patent laws, and so enforcement can become diversified, complex, and expensive. This is another reason Europe is adopting the Unitary Patent.
The choice about how to best protect your IP outside of the United States is not an easy one. It is filled with complicated issues, risks, costs, and strategic potholes. If you need assistance or advice about how to manage your portfolio, please reach out to patent attorney Tom Galvani.