Introducing the Unitary Patent
Since the European Patent Office (EPO) began examining patent applications, back in 1978, it has offered applicants the opportunity to obtain patent protection in Member States of the EPO via a centralised examination and grant procedure. The granted European patent is essentially a “bundle” of national patents, which must be validated and maintained in each Member State for which patent protection is sought.
From 1 June 2023, the UP offers an additional way for patentees to obtain patent protection in Europe via the EPO. The UP will make it possible to obtain coverage for multiple EU countries with a single patent right.
What is changing and what is staying the same?
Nothing will change for the pre-grant stage. Filing, search and examination of European patent applications will continue as normal.
After grant, it will still be possible to obtain patents in EPO Member States via the existing national validation route. However, it will also be possible to obtain a UP (covering EU countries that have signed and ratified the UPC agreement) by filing a request for unitary effect. The UP will not replace the existing validation route – it can exist alongside a bundle of national patents (for example, UK, ES and/or CH patents).
The current national validation process must be used for:
- non-EU countries
- EU-countries that have not signed the UPC Agreement
- EU countries that have signed, but not ratified, the UPC Agreement
Which countries are included in the UP?
The UP will have effect in EU countries that have ratified the UPC Agreement.
As of 1 September 2024, the countries that will be included in the UP’s coverage are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, Sweden.
As more EU countries ratify the UPC Agreement, coverage will increase. However, the countries covered by a granted UP will be fixed. The countries included in each UP will be determined by countries included at the time the EPO registers the request for unitary effect.
How can a UP be obtained?
It will only be possible to request unitary effect for applications filed on or after 01 March 2007.
To obtain a UP, a request for unitary effect must be filed at the EPO. The deadline for requesting unitary effect will be one month from the date of grant. Initially, it will also be necessary to file one full translation of the patent specification when requesting unitary effect. After the UP has been available for six years, it will no longer be necessary to file a translation.
If the patent application was filed in (or subsequently translated into) English, the translation can be into any other official language of an EU member state. If the patent application was filed in (or subsequently translated into) French or German, it is necessary to file a translation into English. The translation is for the purpose of information only, and has no legal effect.
What are the pros and cons of choosing a UP?
The UP offers broad territorial coverage at a relatively low cost. Requesting unitary effect simplifies the validation process, since it only requires filing a single request and a single translation. The request for unitary effect and subsequent renewal fees will be handled by the EPO, which is intended to alleviate the administrative burden.
The cost of renewal fees is equivalent to the cost of maintaining national patents in the four most popular countries (the countries where European patents were most often validated in 2015). If you typically only validate in four or fewer countries, the potential cost saving on renewal fees is less significant. This approach is also less flexible; a UP can only be maintained, as a whole, in all of the relevant EU countries. It is not possible to reduce the cost of maintenance by dropping some countries later down the line.
There are also considerable cost savings when recording assignments of UPs compared to national patents. Many bureaucratic steps required by national patent offices are not required by the UPC.
Another consideration is that the UPC has exclusive jurisdiction over the UP. The UPC is a new, relatively untested court, so it inherently involves some degree of uncertainty. Patentees may take advantage of central enforcement. Equally, the UP is vulnerable to central revocation.
There are also some potential cost-savings for EU-based SMEs filing in EU languages other than English, French or German.