After the ratification procedures by participating EU member states, the unitary patent (UP) system will be effective in Slovenia from June 1, 2023 (effective date).
The UP is a type of patent that provides protection for inventions in multiple countries of the EU through a single, unified system. Slovenia, as an EU member state ratifying the Unitary Patent Court (UPC) Agreement in October 2016, is part of the UP system. This means that Slovenian inventors and companies can apply for a UP that provides protection in Slovenia as well as in other participating EU member states without the need to separately validate their patent in each individual country.
EP holder´s options BEFORE THE EFFECTIVE DATE
1. OPT OUT: Until the effective date and during a transitional period of (at least) 7 years after the effective date, EP owners can request opt-out to remove granted EP and published EP applications from the jurisdiction of the UPC. Existing EP for which no opt-out will be submitted will be automatically opted-in and will therefore fall under the UPC from the effective date on.
This is an important question to answer by EP holders. On the one hand, EPs that are not opted-out of the UPC may be enforced in multiple EU countries using a single procedure. On the other hand, these same patents may be invalidated via a single revocation action.
2. DELAY OF PUBLICATION: At an EP applicant’s request, the European Patent Office (EPO) will delay issuing its decision to grant an EP so that the mention of the grant is published in the European Patent Bulletin on or immediately after the effective date. Only then will the period of one month begin within which the application for unitary effect must be filed if a UP is desired.
3. EARLY REQUESTS: The EPO allows early requests for unitary effect. This allows the EPO to register unitary effect immediately at the start of the system, provided all corresponding requirements are met.
What are EP holder´s options AFTER THE EFFECTIVE DATE?
Once an EP application is granted by the EPO (the procedure stays the same as before), patentees will have the following options to choose from:
1. Classic European Patent: Validating their EP in select countries according to the current system
2. National route: Those preferring to seek protection in individual European Patent Convention contracting states can still file patent applications with those states national patent offices
3. Opting for a hybrid approach i.e. to request unitary effect for your EP while also validating the classical way in countries that are not covered by the UP (e.g., the United Kingdom, Switzerland or Spain).
“Safety net” in Slovenia
“Safety net” (to be implemented in the Slovenian IP Act in 2023) is providing the possibility to validate EP in Slovenia where a request for unitary effect has been withdrawn or rejected either by the EPO or the UPC at the time when deadlines for validating the EP already expired. The holder of the EP shall file a request within 3 months from the date the decision to reject the request for registration of unitary effect is final. Without such a provision, the holder of an EP would remain without patent protection in Slovenia, despite having fulfilled all the conditions for the granting of a EP.
Mediation and arbitration procedures will take place in Slovenia
The Unitary Patent Court will have its Patent Mediation and Arbitration Centre seated in Ljubljana (Slovenia) and Lisbon (Portugal), thus patent disputes will be solved also in Slovenia in mediation or arbitration procedure.
This text is for informational purposes only and should not be considered as legal advice. Should you require any additional information, feel free to contact us.
