What is the Unitary Patent (UP)?
A Unitary Patent is a single patent providing uniform protection across all participating EU Member States. This means that it is now possible for the patent to be enforced across a subset of (currently) 17 countries of the EU in a single infringement action, and to be kept in force by payment of a single annual renewal fee. On the other hand, it is possible for third parties to apply to have a Unitary Patent revoked across all of the participating EU Member States by filing a single revocation action in the UPC.
Although the Unitary Patent will eventually cover most or all EU Member States, Spain, Croatia and Poland have not yet signed a commitment to participate in the system. Also, some other countries that agreed to “enhanced cooperation” to establish the Unitary Patent system will not be covered by the first Unitary Patents because they have not yet ratified the Unified Patent Court Agreement (UPCA) and the UPCA and UP have been introduced together. It is likely to take some time before the legislation is ratified in all of the countries which originally indicated their intention to participate.
How does the Unitary Patent differ from a European Patent?
The European Patent Convention (EPC) provides a centralised procedure for obtaining European Patents. Under the existing system, a European patent application filed at the European Patent Office (EPO) gives applicants the option to protect an invention in one or more of the 39 European countries that are contracting states of the EPC.
Once a European Patent is granted by the EPO, it is necessary to ‘validate’ the patent on a country-by-country basis in each of the individual countries in which patent protection is required. In practice, this requires registering the granted European Patent with each national patent office, and in some cases filing translations. This results in a bundle of national patents rather than a single patent that can be renewed and enforced centrally. Following grant of a European patent, renewal fees (required to keep the patent in force) are payable to each national patent office in which the patent has been registered.
The resulting national patents can be renewed or allowed to lapse separately in each country, depending on the coverage required during the lifetime of the patents. Likewise, any court proceedings to enforce the patent against an infringer, or any action by third parties to have the patent revoked, usually have to take place separately before the national court of each country.
By contrast, the single Unitary Patent covers those EU Member States that have chosen to participate and have completed their ratification of the UPCA, although it does not cover non-participating EU Member States, nor EPC Contracting States that are not members of the EU. A single annual renewal fee is payable to keep the Unitary Patent in force across all the participating states, although this also means that the proprietor does not have the option of reducing the number of countries (and the corresponding level of renewal fees) during the lifetime of the patent.
How does an applicant obtain a Unitary Patent?
The new Unitary Patent system in fact still makes use of the traditional European patent application procedure, and a Unitary Patent starts life as a conventional European Patent application which is examined and granted by the EPO under the normal system. However, once the European Patent application is granted, the applicant now has one month to register the patent as having unitary effect in the participating states. This involves filing a translation of the complete specification into the language of another EU country, although in the longer term it is envisaged that this translation requirement will be superseded by the provision of high quality machine translations of the patent into the official languages of all participating states at no cost to the applicant.
Is it still possible to obtain a European Patent as under the previous system?
Yes, there are no plans to replace the existing European Patent system. The Unitary Patent is available as an additional option at the grant stage, and runs in parallel with the traditional system. This means that at the grant stage, the applicant now has the choice of pursuing unitary protection in the participating states, or validating the European Patent in some or all of those countries individually. In fact, even where the applicant opts for a Unitary Patent, it is still necessary to validate the European Patent in the usual way if protection is required in EU countries not participating in the Unitary Patent, such as Spain, or in any non-EU states which are covered by the European Patent, such as the United Kingdom. However, it is important to note that if the applicant opts for unitary protection, it is not then possible also to validate the European Patent in countries which are already covered by the resulting Unitary Patent.
Which countries does it cover?
The Unitary Patent currently covers those EU countries which have agreed to both of the following: to participate in enhanced cooperation to establish the Unitary Patent; and ratified the Unified Patent Court Agreement. These 17 countries are:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
Additional countries that have not yet ratified the UPCA, but which are expected to join in the future are:
Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia.
In the coming years, there is an expectation that the number of countries covered by future Unitary Patents will not be limited to the initial group of 17 countries. The countries covered by each Unitary Patent will depend on which of the participating EU countries have completed their ratification of the UPC Agreement at the time when that patent is granted. This means later-granted European patents may obtain unitary effect for additional countries, if the legislation is ratified by more of the participating countries before they are granted (possibly including additional countries that join the EU and the Unitary Patent system in future).
Following the UK’s departure from the European Union, the UK withdrew from participation in the new system and does not form part of the territory covered by a Unitary Patent.
How much does it cost?
One of the potential benefits of the Unitary Patent for applicants is the ability to obtain patent protection across a large number of countries without the need to validate a European patent in each country individually, with the associated costs and translation requirements for each country. This can result in significant cost savings, particularly for applicants who routinely validate their European patents in a large number of the available European states. Similarly, only a single annual renewal fee will be payable in respect of the Unitary Patent (this single fee will cost roughly the same as 4 national renewals), whereas otherwise renewal fees must be paid in each of the individual countries in which a European patent is to be maintained.
In June 2015, it was agreed that the single renewal fee for the Unitary Patent would be set at a level corresponding to the sum of the renewal fees payable for the four countries in which European patents were most frequently validated, namely Germany, France, UK and the Netherlands, and the renewal fees were set accordingly at that time. No reductions in the renewal fees have been provided for small entities or SMEs, as had initially been proposed, although this is potentially subject to review in the future.
It remains to be seen whether this fee level will be low enough to encourage widespread use of the system among the large proportion of applicants who validate in only a handful of countries, or whether it will mainly benefit the minority of applicants who already validated in a very large number of countries. The EPO has indicated that adoption of the Unitary Patent system by small entities will be monitored, and further measures to encourage use by such entities may be implemented if necessary.
When did it come into effect?
The Unitary Patent system began on 1 June 2023. The Unitary Patent has been introduced alongside Europe’s new Unified Patent Court.
Since 1 March 2023, patent owners have been able to register opt-outs for patents that they wish to keep out of the jurisdiction of the new court.
The Unitary Patent system now provides an additional option for applicants at the point where a European patent application is granted. This provides a straightforward and cost-effective way of obtaining patent protection across a large number of European countries, although some applicants may conclude that they do not need protection in a large number of countries and that the cost of the Unitary Patent is not low enough for them to switch from the traditional approach of validating and renewing (or lapsing) their patents in individual countries.