4 April 2023

Is a Unitary Patent Right for You?

Why obtain a UP?

The benefit of a UP is that it will cover all participating countries at a significantly reduced cost in comparison with obtaining the same coverage through the classical, national validation system. However, in practice, few applicants choose to validate in all countries at the validation stage, so for many the advantages are best understood as the ability to obtain increased coverage for a relatively modest fee.

In considering the cost implications, it is important to recognise that costs occur both on a one-off basis (initially, when obtaining a UP or validating) and then subsequently, as renewal fees are paid each year that the patent is in force.

However, cost is not the only consideration. Once granted, a UP is somewhat less flexible than the alternative. In part, this is because you do not have the option to “prune” some countries from coverage in due course in order to reduce renewal costs.

Moreover, whereas classical validations give the patentee some choice about whether to use the Unified Patent Court (UPC) or to use existing national courts, UPs can only be litigated at the UPC — there is no opt-out for a UP.

It will remain possible to choose to validate conventionally, both for countries within the system and those outside it. Thus, for example, a granted European patent application could be registered as a UP and additionally validated in the UK.

Alternatively, the patent could be validated in the UK, France, and Germany only — this would be less costly but would result in less territorial coverage compared to the UP + UK option.

Understanding the costs

The initial cost of “validating” a classical European patent in each country, and the cost of obtaining a UP, are driven in significant part by the translation costs. The UP will, for an initial period, require a translation of the full patent into another language (assuming the case was prosecuted at the EPO in English, this translation can be into any other European Union language) which means the initial cost is likely to be higher than in the many European countries which have now removed, partially or completely, translation requirements for validation. That said, other countries, such as Italy, do require a full translation of the specification on validation at present. Accordingly, the relative costs between the options will be dependent on the size and complexity of the specification, as well as the countries chosen.

Recall as well that countries like Spain, Switzerland, and the United Kingdom will not be part of the UP, meaning that if protection is sought in these countries the usual procedures will be necessary, together with the UP procedure.

Renewal fees

To compare the cost implications of obtaining a UP against classical validations, one needs to compare the renewal costs associated with the UP against those that would have been incurred had the patent been classically validated. Since classical validations will still be necessary for those countries not taking part, only countries that are covered by the UP are required for the comparison. The chart below shows cumulative renewals incurred, illustrating that where the UP is to replace validation in only two or three countries, it is likely to be more expensive in terms of the official fees over time. However, once the UP covers four or more countries, it is likely to represent a reduction of costs.

Of course, the UP in fact covers a total of 17 countries (initially) and so any increase in costs should be understood in terms of this increased coverage. Alternatively, costs savings will be significant in comparison with strategies that currently lead to protection across a large range of countries.