WHAT IS Unitary Patent?

Unitary Patents make it possible to get patent protection in all participating EU Member States by submitting a single request to the EPO, making the procedure simpler and more cost-effective for applicants. Before unitary effect can be registered by the EPO, the applicant must first obtain a European patent.

A European patent application must therefore be filed and processed in the same way as today. After the European patent is granted, instead of validating a European patent in several countries, patent proprietors can choose to file a request for unitary effect and obtain – in a single and straightforward procedure carried out centrally by the EPO – a Unitary Patent providing uniform protection in all participating Member States.

The request must be filed in writing – which includes filing by online means – in the language of proceedings no later than one month after the date of publication of the mention of the grant in the European Patent Bulletin.

What does the Unitary patent cost?

There is no fee for filing a request for unitary effect. The EPO will provide a new Register for Unitary Patent Protection that includes legal status information relating to Unitary Patents, e.g. on licensing, transfer, limitation, revocation and lapse.

Annual renewal fees for Unitary Patents are paid to the EPO. Proprietors no longer need to pay national renewal fees in different currencies to multiple patent offices applying different legal requirements. The renewal fees have been set at a very business-friendly level, corresponding to the combined renewal fees due in the four countries where European patents were most often validated in 2015.

The official fee begins at 35 EUR (2nd year) and finishes at 4855 EUR (20th year).

The typical annuity fees:

4th year: 145 EUR

5th year: 315 EUR

6th year: 475 EUR

7th year: 630 EUR

8th year: 815 EUR

9th year: 990 EUR

10th year: 1175 EUR

11th year: 1460 EUR

12th year: 1775 EUR

What is the deadline for filing the Unitary patent request?

The request must be filed within one month after the granting of the common European patent, more precisely after the date of publication of the mention of the grant in the European Patent Bulletin. This time limit is non-extendable. Any request for re-establishment of rights shall be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of the expiration of the unobserved time limit. The request shall state the grounds on which it is based and set out the facts on which it relies.

Translation Requirements

After a transitional period, no translations are required when opting for a Unitary Patent. During this transitional period of six years (which may be extended up to a maximum of 12 years), the patent proprietor has to file one full translation of the European patent specification, namely:

• where the language of the proceedings is French or German, a full translation of the specification of the European patent into English; or

• where the language of the proceedings is English, a full translation of the specification of the European patent into any other official language of the European Union.

UNITARY PATENT countries

The 17 states in enhanced cooperation which already ratified the Agreements and will participate in the Unitary Patent when it starts are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, Sweden.

To obtain coverage in the rest of the countries, such as the United Kingdom or Hungary, applicants will still need to validate EPs nationally in those countries in the same way as today.

What are the advantages and disadvantages of the unitary patent?

Benefits:

– The EPO acts as a one-stop-shop; all post-grant administration will be handled centrally, reducing costs and the administrative workload.

– The renewal fees have been set at a very competitive level.

– The online register includes legal status information relating to patents, notably on licenses and transfers.

– Unified Patent Court (UPC) hears cases regarding infringement valid in the territories of the participating states, with a single court ruling being directly applicable throughout those territories.

Risks:

– Unified Patent Court (UPC) hears cases regarding revocation proceedings of the unitary patents valid in the territories of the participating states. That means only one successful nullity action is enough to revoke our validated patents in all of the European Patent Member States. This risk can be avoided if you use the traditional method of European patent validation and request an „opt-out” from UPC competence.

– Unitary patents results in an extreme increase in the number of patents from advanced foreign (mostly non-EU member) countries in smaller countries. Those who have enforced their patents only in major member states so far will now be given patents in the smaller countries as well, as a present. The developers in smaller countries may be unprepared for such a situation where they have to face an army of Unitary patents. This is unfavorable for member states with less innovative technological power. The multiplied number of foreign patents is expected to prevent national technical development.

When Did it begin?

The start of the new system was 1 June 2023.

WHAT IS Unified Patent Court?

The Unified Patent Court (UPC) is an international court set up by participating most of the EU Member States to deal with the infringement and validity of both Unitary Patents and European patents, putting an end to costly parallel litigation and enhancing legal certainty. Earlier, national courts and authorities decided on the infringement and validity of European patents. In practice, this could lead to difficulties when a patent proprietor wishes to enforce a European patent in several countries or when a third party seeks the revocation of a European patent.

The Court of First Instance is composed of a central division (with its seat in Paris and a section in Munich) and several local and regional divisions. The Court of Appeal is located in Luxembourg.

All European patent applications and European patents with a filing date of 01 March 2007 or later are subject to the jurisdiction of the UPC, unless an opt-out is filed. The opt-out ensures that the litigation options remain the same.

What is the opt-out?

In practice this means that enforcement or third-party actions can take place in the UPC or one or more national courts. For an initial transition period of seven years (which may be extended), it will be also possible to remove a patent granted by the EPO from the exclusive jurisdiction of the UPC by registering an opt-out at the UPC Registry.

There was a three month ‘sunrise’ period before the UPC became operational, when proprietors were able to lodge their opt-out. The opt-out is available from the beginning of the “sunrise period” to the end of the “transitional period”, provided that there is no ongoing UPC litigation when the opt-out is filed.

Unitary patents cannot be opted out at any point and are under the exclusive jurisdiction of the UPC. The UPC does not have any jurisdiction over national patents.

Can I withdraw my opt-out request?

The opt-out may be withdrawn provided there is no ongoing national litigation in connection with the European patent. However, an opt-out may only be performed once, so when the opt-out is withdrawn, the European patent will fall definitively under the jurisdiction of the UPC.

Can I opt-out a unitary patent?

It is not possible to request a unitary patent opt-out.

Should I opt-out?

It may be advisable to opt-out of an owner’s most essential European patents. That way, a revocation of the pertaining patent rights can be made more complicated, and patent owners may have better protection for their most important rights.

Leaving at least some patents under UPC jurisdiction may have the advantage of allowing you to become familiar with the court’s modus operandi through first-hand experience as well as potentially influencing its case law. The main risk to be considered is being exposed to the possibility of central revocation.

If the patent owner is not afraid of a counterclaim of invalidity, it will be advisable to choose the UPC over the various national courts, because that way, a single action of the court will be enforceable in several jurisdictions. The financial and operational burden of carrying out our parallel processes in different jurisdictions will thus be eliminated. Although the costs of proceedings before the UPC are expected to be higher than many of its national counterparts, it is also clear that for patent owners with EPs validated in several countries, joining the UPC will actually result in a more economical solution.

countrieS participate in the Unified Patent Court

The 24 states which already have signed up to the unitary patent system and will participate in the Unified Patent Court when it starts are: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovakia, Slovenia, Sweden.

When Did it begin?

The entry into force of the UPC Agreement was 1 June 2023, with the Court opening its doors and starting to receive cases from that date.