UP-countries with areas outside the UP-territory: A Dutch case study

November 27, 2017

The instalment of the Unitary Patent might require patent holders to still make use of the regular European Patent, even within member states who have ratified the UPC agreement. A case study: why you still need a European Patent if you want protection in the entire Kingdom of the Netherlands. 

Currently the Unitary Patent will include a maximum of 25 countries. Which is already less than the European Patent, which covers 38. Hence, if one seeks protection in the whole of Europe it will always be necessary to also make use of the European Patent.

However, there are also cases where a traditional European Patent is required for countries participating in the UPC Agreement. A good example is the Netherlands. Since the Caribbean countries and municipalities that are part of the kingdom of the Netherlands are not part of the European Union, the unitary effect of the EP patent will not apply to this Caribbean section.

Caribbean protection
The Caribbean countries and municipalities Aruba, Curacao, Bonaire, St. Maarten, St. Eustatius and Saba all fall within the kingdom of the Netherlands. Currently, this means that a European Patent that is validated in the Netherlands (EP-NL) is valid in all of these countries and municipalities, with the exception of Aruba. The latter because Aruba has decided to adopt its own law on IP.

Under the Unitary Patent, however, protection is not extended to districts outside of the European Union. Thus, if a European Patent with unitary effect is applied for, this will not include patent protection within the Caribbean section of the kingdom of the Netherlands, whereas this protection is granted with a regular validation of a European Patent in the Netherlands (the current EP-NL).

Even though the total protection area of the EP-NL patent will be reduced, the price of the annual taxes will remain the same.

Cost and consequences
If it is desired to have patent protection within the Unitary Patent system and within the Caribbean section of the Netherlands, a separate EP-NL validation is required next to registration of the unitary effect of the EP patent. This territorially limited EP-NL patent applies only to the Caribbean section of the Netherlands. For this EP-NL patent the same requirements and regulations will apply as with the current EP-NL (as determined by the Dutch Patent Act 1995). 

Even though the total protection area of the EP-NL patent will be reduced, the price of the annual taxes will remain the same. These taxes will remain to be paid to the Dutch Patent Office. Additionally, the use of two systems (UP and EP) requires a more complicated monitoring of all time limits involved.

The requirements of patent translations will also be upheld. Hence, claims still need to be translated to Dutch for EP-NL validation. Finally, all matters of patent expiration, transfer and annulment for patents falling within this territorially limited EP-NL will be dealt with by the Dutch Patent Office and the Court of The Hague.

The Netherlands is not the only country in this unique position. France has similar territories which are covered by the European Patent, but not by the Unitary Patent.

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