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MedTech Outlook | Tuesday, May 09, 2023
Medical device companies must weigh the benefits and risks of Europe's new unitary patent system and seek guidance from experienced patent attorneys for an effective patent portfolio strategy.
FREMONT, CA: At present, the European patent office requires individual validation of patents in European counties where an inventor wants to safeguard their inventions. The costs and requirements for validation, including translation, validation, and attorney fees, vary according to the countries selected. Patent owners have to pay separate annuity fees to maintain patents for a lifetime. Additionally, these validated patents are enforced and revoked individually under the different national laws and procedures of the countries. Consequently, this existing system is a significant administrative and financial burden for parent owners.
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Starting on June 1st, a new system called the unitary patent system will be implemented to reduce the administrative and financial burden on patient owners. The unitary patent system allows applications to validate and maintain their patents in up to 25 European Union member states through a single procedure and payment of a single annuity fee. A unitary patent system will be implemented to simplify the procedure and payment of patent owners. The unified patent court (UPC) has exclusive jurisdiction over unitary patents.
Risk of Invalidation Versus Ease of Enforcement of Patent Rights
To decide on an output for the classic European patents to be enforced in national courts instead of the UPC, patent owners should carefully assess their entire European patent portfolio. Patent owners initially file an opt-out to avoid revocation actions for their current European patent portfolio, and then later withdraw the opt-out to pursue a single enforcement action in the UPC against an infringer. The approach administrative procedure for patent owners.
Effect on Co-Owned Patents and Licensing Agreements
When multiple entities own a patent, they must agree on whether to request a unitary effect for a European patent or to opt out of the UPC. Medical device organisations carefully consider their future joint development agreements and ownership provisions to ensure that they can obtain unitary patents without any conflict.
The new unitary patent system in Europe offers advantages and disadvantages to medical device companies seeking patent protection. Companies must evaluate their patent portfolio, consider the potential risks of a single court invalidating patents in multiple countries, and weigh the financial benefits of obtaining a unitary patent versus validating patents individually in specific countries. Additionally, joint development agreements and licensing agreements must be drafted with consideration of the decision to opt out of the Unified Patent Court, and licensors may need to give notice to their licensees. Seeking guidance from experienced patent attorneys can help navigate these complex decisions and develop an effective international patent portfolio strategy.
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