Understanding the Unitary Patent
The UP (sometimes referred to as a European patent with unitary effect) potentially offers cost and administrative savings for applicants wishing to obtain patent protection across the participating states.
It is designed to be an additional option for innovators, to promote the use of the patent system, particularly among small and medium-sized enterprises (SMEs), and (with the Unified Patent Court (UPC)) to facilitate enforcement of patents.
However, there are several aspects that limit the UP’s appeal, at least in its early stages. These include the limited number of states participating (the United Kingdom, Spain, and Switzerland, for example, are all outside the system), the risk of granted patents being revoked across all participating states, and the uncertainties that arise from a new, untested system.
The current European patent system with national validation (using, where applicable, the London Agreement) will continue to be available, as will national patent systems. These may be preferred options by some applicants, depending on their circumstances.
It is important to emphasise that both classical European patents and the new UPs will be prosecuted before the European Patent Office (EPO) using exactly the same procedures (search, examination, publication, etc.) up to the time of grant.
At this point the applicant will have the option to request UP protection for the participating states and/or to proceed with national validation in the normal way.
Key dates
The past
What will become the UP or European patent with unitary effect has been many years in the making. The two European Union regulations establishing the system entered into force in January 2013. However, 13 member states, including Germany, France, and Italy, had to ratify/accede to the Agreement on a Unified Patent Court (UPC Agreement) before the regulations could apply. Germany became the 17th member state to ratify the UPC Agreement in February 2023, meaning that it will enter into force on 1 June 2023.
The future
In principle, this means that a UP may be requested for any European patent granted on or after 1 June 2023. Ahead of that a sunrise period began on 1 March 2023 to permit opt-outs of existing rights.
Note that the EPO has introduced two transitional measures to support applicants seeking UP protection. As of January 2023, these procedures are now available for European patent applications for which a communication under Rule 71(3) of the European Patent Convention (EPC) has been dispatched and where the applicant has not yet replied.
The first measure enables applicants to file requests for unitary effect early (i.e. before the system officially starts), allowing the EPO to register unitary effect immediately at the start of the system assuming the patent grants after that date . The second measure allows applicants to request a delay in issuing the decision to grant, enabling them to keep open the option of requesting unitary effect when it becomes available.
Participating member states
As an EU project, the UP and UPC are in principle open to all 27 EU member states. But three countries (Croatia, Poland, and Spain) will not take part in the system, at least for now, so in practice it will cover up to 24 EU member states (see the map below).
However, a UP will only be available for those member states that have ratified the UPC Agreement at the point of grant. To date, these are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden.
This means that UPs granted from day one will have unitary effect for these 17 countries. If protection for other countries (including non-EU countries such as the UK, Switzerland, and Norway) is sought, they must be selected and validated in the normal way. Since UPs are an add-on to the current system, it will also remain possible to validate patents in the participating states in the usual way instead of obtaining a UP.
If more EU member states ratify in future, then geographical coverage of UPs granted after that point will increase. However, note that it will not be possible to extend the scope of a UP once it is granted.
This will be important for anyone conducting freedom-to-operate searches – the countries covered by a specific UP will depend on which states had ratified the UPC when it was granted.
Prosecution/grant procedure
Prosecution of European patent applications up to grant is unchanged by the new system. As such, to secure a UP, an applicant must obtain a European patent by filing an application at the EPO, which will be examined in the normal way. Once the application is granted, the proprietor will file a “request for unitary effect” within one month to obtain a UP. European patent attorneys from any EPO contracting member state (i.e. not only those from states participating in the UP) will be able to act as representatives both up to grant and for the process of requesting unitary effect.
To be eligible, the European patent must have been granted with the same set of claims in respect of all the participating member states.
The decision about requesting unitary effect does not need to be made until the point of grant and applicants can therefore keep their options open during the examination procedure.
The decision may be influenced by the nature of the technology, geographical scope, budget, and commercial prospects.
Possible strategies
There are many possible strategies, for example:
Maximum coverage for lowest cost – in this situation, it would make sense to have a UP plus national validation in some or all of the remaining EPC states (but this strategy also brings the risk of central revocation of the UP).
Key markets only – if protection is sought in five key markets, such as France, Germany, the Netherlands, Switzerland, and the UK, then national validation might be preferred to the UP as only the first three of these would be covered by the UP.
Mixed approach – UP protection could be requested, alongside national validation for other key markets, for example UP plus Spain plus UK to give protection in 19 countries in total.
These examples focus on the cost of renewals, but other factors will also be at play. For example, once a UP is obtained it falls or stands as one. This means that down the line a proprietor will not have the option of reducing costs by “pruning” one or more countries from coverage, and also that a UP is at risk of central revocation in a single action before the UPC.
Fees
There is no official fee for request for unitary effect. However, all the fees relating to grant of a European patent will have to be paid to the EPO as normal. Moreover, during an initial transition period, there will be a cost associated with the filing of a translation of the patent into a second language.
There will be a single renewal fee for UPs, which will be administered by the EPO, instead of national renewal fees paid to national offices. This promises significant savings over the life of a patent, as well as greater administrative simplicity.
Renewal fees
The UP official renewal fees were calculated based on the top four countries (which, at the time of calculation, included the UK). See below.
Year 2 = €35
Year 3 = €105
Year 4 = €145
Year 5 = €315
Year 6 = €475
Year 7 = €630
Year 8 = €815
Year 9 = €990
Year 10 = €1,175
Year 11 = €1,460
Year 12 = €1,775
Year 13 = €2,105
Year 14 = €2,455
Year 15 = €2,830
Year 16 = €3,240
Year 17 = €3,640
Year 18 = €4,055
Year 19 = €4,455
Year 20 = €4,855
Other things being equal, the cost of renewing a UP should therefore be lower than using the existing system when the European patent is validated in four or more participating states. However, note that it is an all-or-nothing system – it is not possible to “prune” costs by dropping countries from the UP during its lifetime.
Renewal fees in any other EPC states must be paid additionally in the normal way. Therefore, the extent of any savings made by using the UP will depend on the total number of countries in which protection is sought, as well as the expected lifetime of the patent.
Languages
One of the aims of creating the UP system is to simplify the currently burdensome requirements for translation of European patents. Ultimately, no manual translations will be required for UPs as machine translations are expected to be good enough.
Initial Requirements
However, in the inevitable compromises that led to the regulations, a transitional period was agreed which will last for at least six (and up to 12) years. During this period, one full translation of the UP specification must be filed, in addition to the translation of the patent claims required at the end of the grant procedure.
Where the language of the proceedings is English, the translation must be into any of the 23 other official languages of the EU. Where the proceedings are in French or German, the translation must be into English. This translation is for information only and has no legal effect.
Compensation scheme
There is a compensation scheme to help with translation costs. This is available to small and medium-sized enterprises , natural persons, non-profit organisations, universities, and public research organisations in the EU filing in a language other than English, French, or German. It is set at €500.
Note that the London Agreement continues to apply for national validations of European patents in contracting states, and offers significant savings on translation requirements in those states.
Therefore, applicants will need to weigh up carefully the cost benefits of the UP compared to European patents validated using the London Agreement, particularly where protection is only needed in a small number of participating states.
Records
The EPO will maintain a Register for Unitary Patent Protection (Register). This is expected to be simpler to use than multiple national systems.
The Register will include legal status information on licensing, transfer, limitation, revocation, and lapse of UPs. It will also be the authoritative source for information on the coverage of each UP, as this will depend on which countries had ratified the UPC Agreement at the time of grant.
The Register is expected to be publicly accessible online and easy to access.
Enforcement
UPs will be enforced in the new UPC. Harmonised enforcement in the UPC aims to simplify procedures, reduce costs, enhance legal certainty, and eliminate conflicting decisions.
Patent proprietors will have the certainty of knowing that UPs will always be litigated in the UPC rather than a patchwork of national courts, as at present, and that decisions of the Court will apply across all participating states.
Validity and infringement
However, note that the UPC will have jurisdiction over both validity and infringement. This means that a central revocation action can be brought against a UP at any point during its life from grant to expiry.
The UPC therefore provides a new opportunity to centrally revoke a UP after the nine-month opposition period has expired.
The interaction between the UPC and EPO opposition proceedings will be closely watched. The UPC will not normally stay proceedings where an opposition is pending, unless a decision is expected quickly.
Challenging UPs
There are likely to remain several reasons why parties will want to file oppositions, including the opportunity to knock out a European patent in full (not just that part of it covered by the UP), the lower fees compared to the UPC, and familiarity with a tested system.
Decisions about challenging UPs will therefore need to be considered carefully, taking into account the different options available, timing, and costs, as well as the particular issues related to the technology and business.
Unitary supplementary protection certificates (SPCs)
There is a potential gap in protection regarding SPCs which are available for pharmaceutical and plant protection products in the EU and are administered nationally.
The European Commission plans legislation to introduce a “unitary SPC” to complement the UP. It proposes to create a regulation to achieve this and held a consultation in spring 2022. Further announcements are expected soon.
What happens now?
Patent applicants will now be able to obtain Unitary Patents for any pending European patent application. The EPO has provided transitional measures to permit an early request for a Unitary Patent, as well as to delay grant, once the applicant has received a Rule 71(3) communication (Notice of Allowance). Therefore, it is important for patent applicants and third parties to be well prepared in order to make decisions. This includes deciding whether to seek unitary effect for EP applications approaching grant; choosing whether to take advantage of the EPO transitional arrangements; monitoring what competitors are doing; and planning opposition/revocation strategies if applicable.
Checklist of actions for UP
- Review pending applications at EPO and decide if any are appropriate to seek for unitary effect
- Consider whether to file an early request for unitary effect for any applications nearing grant
- Put in place systems to monitor requests for unitary effect by competitors
- Review budgets and filing/opposition strategies based on latest information
More details
See the following websites:
- European Commission
- European Patent Office
- EPO Unitary Patent Guide
- Regulation (EU) NO 1257/2012 and Council regulation (EU) No 1260/2012: the former concerns the creation of the Unitary Patent and the latter the translation arrangements.
- Rules relating to Unitary Patent Protection and Rules relating to Fees for Unitary Patent Protection
