The Unitary Patent (UP), a single European patent which has unitary effect across all participating states, has been in prospect for decades. In 2013, the EU finally found the political will to make the UP a reality using the “enhanced cooperation” procedure within the EU framework. 26 of the 28 EU states are currently involved1.

Whilst users of the existing European patent system already benefit from a common application procedure, the UP and Unified Patent Court (UPC) intends to simplify the post-grant procedure within the participating states. In particular, the UP and UPC will enable enterprises to maintain broad geographical protection more cost-effectively within the participating states, where desired.

The “unitary” aspect of UPs means that the scope of protection will be identical across all participating states, and it will not be possible to limit or nullify a UP with respect to only a portion of the territory of the participating member states (although licences may be region-specific).

Background – the Current European Patent (EP) system

Under the current system, a European Patent (EP) granted by the EPO is effectively a bundle of independent national patents in up to 40 European states, depending on where the patentee chooses to validate it. National validation involves fulfilling certain criteria (such as the filing of a translation and/or appointment of a local representative) which differ from state to state. 

Once validated, separate national renewal fees will be due, and any enforcement must be undertaken in each state individually. Traditional EP patents are therefore non-unitary.

The current EP system will remain alongside the UP system. However, the court jurisdiction to which EP patents will be subjected shall be changing (see our timeline for the UPC and discussion of the UPC).

How will the Unitary Patent (UP) work?

A party wishing to obtain a UP shall file and prosecute a European patent application before the EPO in the same way as per the current system. Upon grant, the European Patent (EP) may optionally be validated as a UP (officially a “European Patent with Unitary Effect”) by filing a request within one month of the publication of grant. The UP will then be entered into a newly created register.

To obtain protection in European states outside of the UP system, the patentee can validate the granted EP in those states using the current system, thereby obtaining a traditional EP for those states alongside their UP.

For example, a patentee may seek protection in UP-participating states, together with Spain and Norway. Upon grant of their EP, they may request a UP and additionally validate in Spain and Norway using the existing procedures. By requesting a UP, there will be no need or opportunity to separately validate in any UP-participating states. Only one representative will need to be appointed for the UP, and a single annual renewal fee for the UP will be due each year, payable to the EPO.

Fees

The renewal fees for UPs have been set based on the four most popular participating states for patent validations (Germany, the UK, France and the Netherlands), and are set out below.

Unitary Patent Renewal Fees

Annual maintenance fees will still be due to the EPO whilst a European patent application is pending (i.e. before grant).

The level of renewal fees means that it will be cost-effective to obtain pan-European patent protection within the UP-participating states, where desired. However, it is important to note that many users of the current EP system tend to validate in relatively few European states, typically between three and six. The level of renewal fees indicates that the UP system may be cost effective for patentees that typically validate in at least four UP-participating states. Patentees that typically validate in fewer than four UP-participating states may still find a UP cost-effective if the additional geographical protection is beneficial to them, or otherwise may prefer to continue using the current EP system of bundled rights. 

Further discussion on making the choice between a UP, EP and national patents can be found here.

When will it come into force?

The main hurdle before the UP system comes into effect is the ratification of the UPC Agreement. The ratification process is currently underway. 13 states are required to ratify, and these must include the UK, France and Germany. Progress of the ratification process will be updated, together with our ratification map, here.

Please also refer to our timeline for the UPC and discussion of the decisions to be made by patentees in view of the forthcoming UP system.

 Translations

During a transitional period for translations lasting between 6 and 12 years, one translation of the patent specification will be required (into English, or into any other official language of the European Union if the specification is already in English). After this period there will be no translation requirements and the intention is to use machine translation to provide all translations of Unitary Patents that may be required.

It will still be necessary to provide translations of the claims into the three official languages of the EPO, as per the current EP system.

For the purposes of infringement proceedings, a patent proprietor may have to obtain a translation of the specification, and the language may depend on the state where infringement occurred, where the alleged infringer is domiciled, and/or where proceedings are to take place.

Footnote:

1 Spain has elected to remain outside the UP system having previously raised a legal challenge. Croatia has also elected to remain outside. Italy intends to adopt the UP Regulation, after previously objecting.

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