The Unitary Patent

There have long been attempts to introduce a single patent covering all of Europe, but these have historically suffered from disagreements over language requirements. However, following a series of new agreements over recent years, and a hiatus while the legality of Germany’s participation was challenged in its Constitutional Court, a unitary European patent covering a first group of 17 of the EU’s member states is about to become a reality. This is being introduced alongside a new Unified Patent Court (UPC).

Below we outline some of the key features of the proposed system and the new opportunities it will introduce for patent applicants.

 

 

What is the Unitary Patent (UP)?


A Unitary Patent will be a single patent providing uniform protection across all participating EU Member States. This means that it will be possible for the patent to be enforced across a subset of at least 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 will be 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, other countries that agreed to “enhanced cooperation” to establish the Unitary Patent system are not expected to be covered by the first Unitary Patents because they have not yet ratified the Unified Patent Court Agreement (UPCA) and the UPCA and UP are being introduced together. It is likely to take some time before the legislation is ratified in all of the participating countries.

 

How will the Unitary Patent differ from a European Patent?


Currently, 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 38 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 will cover those EU Member States that have chosen to participate and have completed their ratification of the UPCA, although it will not cover non-participating EU Member States, nor EPC Contracting States that are not members of the EU. A single renewal fee will be payable to keep the Unitary Patent in force across all the participating states, although this also means that the proprietor will not have the option of reducing the number of countries (and the corresponding level of renewal fees) during the lifetime of the patent.

 

How will an applicant obtain a Unitary Patent?


The new Unitary Patent system will in fact still make use of the existing European patent application procedure, and a Unitary Patent will start life as a conventional European Patent application which is examined and granted by the EPO under the current system. However, once the European Patent application is granted, the applicant will have one month to register the patent as having unitary effect in the participating states. This will involve filing a translation of the complete specification into the language of another participating Member State, 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.

 

Will it still be possible to obtain a European Patent as under the existing system?


Yes, there are no plans to replace the existing European Patent system. The Unitary Patent will be an additional option at the grant stage, and will run in parallel with the current system. This means that at the grant stage, the applicant will have 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 will still be 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 will it cover?


To begin with, the Unitary Patent will cover 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 are not expected to have ratified the UPCA when the Unitary Patent comes into existence are:

Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia.

In the years after it comes into effect, 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). The Unitary Patent will not become a reality in any country  until the legislation has been ratified by Germany – the last of three mandatory ratification states.

Following the UK’s departure from the European Union, the UK withdrew from participation in the new system and will not form part of the territory covered by a Unitary Patent.

How much will 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 could 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 currently 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 will be provided for small entities or SMEs, as had initially been proposed.

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 validate 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 will it come into effect?


Probably 1 June 2023, with some actions being possible from 1 January 2023. The Unitary Patent is being introduced alongside Europe’s new Unified Patent Court.

An official roadmap for the UPC was published in October 2022, initially identifying 1 April 2023 as the planned date for the UPC to start receiving cases but in early December 2022, the planned start date was deferred by 2 months to 1 June 2023, and 1 March 2023 as the date when patent owners can apply to register opt outs for patents that they wish to keep out of the jurisdiction of the new court. In November 2022, the EPO announced that 1 January 2023 will also be the date when it will start accepting requests for delayed grant and early requests for unitary effect, for patent applications that have been approved for grant but have not yet granted at that time.

The above UPC start date is conditional on Germany completing its ratification process in February 2022. This is because the Unitary Patent system will come into effect on the first day of the fourth month after a minimum of 13 countries (which must include France, Germany and Italy) have ratified the agreement to implement the new Unified Patent Court. As of October 2021, 16 countries had ratified the UPC agreement, including France and Italy. Therefore, we are only waiting for Germany to deposit its ratification document to trigger the start date. This currently expected timeline may change and we will be monitoring developments.

 

Conclusions


The Unitary Patent system is set to provide an additional option for applicants at the point where a European patent application is granted. This will provide a straightforward and cost-effective way of obtaining patent protection across a large number of European countries, but some applicants have concluded 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 (and lapsing).

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