Guide to the unitary patent (UP)
In this guide we explain the key points of the unitary patent. We have published a separate guide to the UPC.
Set to commence in late 2022 or early 2023, the unitary patent (UP) together with the Unified Patent Court (UPC) represents the biggest change to the European patent system in more than 40 years. It is therefore now, more than ever, vital that users of the European patent system be aware of the opportunities and risks the new system brings.
The unitary patent will be a single patent right which will have effect in those European Patent Convention (EPC) states which are:
- part of the European Union (EU) and
- have signed and ratified the UPC Agreement.
The unitary patent is not, however, replacing the current European patent system. Nothing will change in the way in which a European patent application is filed, prosecuted and granted by the European Patent Office (EPO). The opposition and appeal procedure before the EPO will still apply. The unitary patent will exist alongside the bundle of national patent rights currently available by validating a European patent. Independent national patent systems will also continue to be available.
It is impossible in a guide of this nature to deal with every detail of the unitary patent. If you are contemplating using the system, you should take specific and detailed advice relating to your particular circumstances. We are happy to provide more detailed and specific advice on request.
The unitary patent has been created via the unitary patent package. This includes the Agreement on a Unified Patent Court (UPC Agreement) which was signed by 25 EU member states on 19 February 2013, Regulation (EU) No 1257/2012 concerning unitary patent protection, and Regulation (EU) No 1260/2012 setting out the translation arrangements for such protection.
After the withdrawal of the UK from the EU (Brexit), the UK withdrew from the UPC Agreement leaving the following 24 countries:
- Czech Republic
Once it comes into force, the UPC Agreement takes effect in all signatory countries that have ratified the UPC Agreement.
References in this guide to “contracting member states” are therefore to countries that have both signed and ratified the UPC Agreement. Member states within this group will increase in number as more signatories ratify the Agreement.
Requesting unitary effect
The procedure for requesting unitary effect will be relatively straightforward. Upon grant of a European patent which would have been searched, examined and granted by the EPO according to the current system, the patent proprietor will have the option of filing a ‘request for unitary effect’. This request must be filed within one month of the mention of grant in the European Patent Bulletin. No official fee will be payable.
Who can file the request?
The request for unitary effect must be filed by the proprietor or their professional representative. If the European patent is granted to multiple proprietors, for the same or different contracting member states, a common representative must file the request.
Registration and remedies
If all of the requirements are met, the EPO will register the unitary effect in the Register for unitary patent protection, and inform the requester of the date of registration. This date is crucial for determining the scope of the unitary patent.
If no request for unitary effect is filed by the one-month deadline, no extension is available and no communication will be issued by the EPO. Re-establishment of rights will be available.
Where a request for unitary effect is filed outside of the one-month deadline, the EPO will issue a communication rejecting the request. Re-establishment of rights will be available.
Translation of patent specification
During the transitional period (defined in this guide), the request for unitary effect must include a translation of the patent specification. After the transitional period, no translation will be required.
The translation to be filed is dictated by the language of proceedings before the EPO:
|Language of the proceedings||Translation required with the request for unitary effect|
|French or German||English|
|English||Any other language of the European Union|
The transitional period for the unitary patent has no fixed end date, but is six years with a review at the end of the six years, and then every two years thereafter. This review will evaluate the availability of high quality machine translations into all the official languages of the EU. The transitional period for the unitary patent will last for a maximum of twelve years from commencement of the system.
When a European patent application is filed in an EU official language other than English, French and German and the patent proprietor fulfils certain conditions, compensation may be requested for translation costs. At the time of writing this compensation is up to a ceiling of €500.
The conditions for the proprietor to fulfil include:
- having residence or principal place of business in the EU; and
- being a small and medium-sized enterprise, natural person, non-profit organisation, university or public research organisation.
Availability of a unitary patent
A unitary patent will only be available for European patent applications which were filed on or after 01 March 2007.
This is because the European patent must have granted with the “same set of claims” in all of the contracting member states irrespective of whether these states have ratified the UPC Agreement or not. Malta joined the EPC on 01 March 2007. European applications which were filed before 01 March 2007 do not therefore have the same set of claims in all of the member states because there is no set of claims in Malta.
If Croatia signs the UPC Agreement then a unitary patent will only be available for pending European applications which were filed on or after 01 January 2008. This is the date on which Croatia joined the EPC and, hence the date on which there will be a set of claims in all of the member states.
There is also speculation that a unitary patent will not be available for a European patent application which does not designate all of the participating member states, that is, applications filed before 01 April 2009 when it was possible to pay up to seven designation fees.
Register for unitary patent protection
The Register for Unitary Patent Protection will be a new register which will form an integrated part of the existing European Patent Register.
It will show for example that:
- unitary effect has been registered for a European patent;
- the date of that registration;
- the member states in which the European patent has unitary effect;
- information regarding the payment of renewal fees;
- details of any supplementary protection certificate(s) for a product protected by the patent, as well as the member state issuing the certificates; and
- any rights or transfers of rights which have been appropriately registered.
The Register for Unitary Patent Protection will also provide information concerning proceedings before the UPC. It is envisaged that there will be a link between the Register for Unitary Patent Protection and the Registry of the UPC.
Extent of coverage
A unitary patent will take effect in the member states which have signed and ratified the UPC Agreement at the date of registration of unitary effect by the EPO. This means that unitary patents obtained in the early years’ of the system are likely to have a different geographical coverage to unitary patents obtained in later years.
The current status of ratification can be found at: http://dycip.com/upcratification.
Relationship with validation
The unitary patent will co-exist with the current validation process. For contracting member states which have ratified the UPC Agreement, the patent proprietor will have a choice of obtaining a unitary patent or validating according to the current procedure.
For those EPC states which have:
- not ratified the UPC Agreement
- not signed the UPC Agreement, or
- which are not part of the EU
the validation process must be used.
The annual renewal fee for a unitary patent will be due on the last day of the month in which the anniversary of the filing date of the European patent application falls. This fee is payable to the EPO and can be paid by any interested party.
The first renewal fee will be due in respect of the year following the year in which the mention of the grant of the underlying European patent is published in the European Patent Bulletin. If the first renewal fee falls due between the date of grant and three months from notification that the request for unitary effect has been registered, then this first renewal fee can be paid up to the end of the three month period without any late fees being due.
An example timeline of what this means in practice is shown right.
If a renewal fee is not paid in time, then the late renewal fee may still be validly paid within a six month grace period as long as an additional fee, which is 50% of the belated renewal fee, is also paid.
If the renewal fee is not validly paid within the six-month grace period then the EPO should issue a further communication notifying the patent proprietor of their loss of rights. The only remedy available is re-establishment of rights.
If a renewal fee is not paid then the unitary patent will lapse in respect of all states where it has effect. It is not possible to drop states from a unitary patent by failing to pay renewal fees. The scope of a unitary patent is fixed throughout the patent life: it is an ‘all-in or all-out’ system. This is a potential down side of the unitary patent which is discussed later in this guide.
At the time of writing the official fee (in Euros) for renewing a unitary patent is:
|Years from filing||Official renewal fee (€)|
Renewal fees will also need to be paid separately to those national patent offices where a bundle national patent is obtained.
For example, if you request unitary effect but also want to obtain protection in the UK then the European patent will need to be validated in the UK and renewal fees will be due to the national patent office in respect of the UK designation of the European patent on top of the renewal fee payable to the EPO for the unitary patent.
Licences of right
A 15% reduction in the renewal fees (and any additional fees due) can be obtained if the proprietor files a statement with the EPO that they are willing to allow any person to have a licence in return for appropriate consideration.
The availability of a ‘licence of right’ can be withdrawn at any time but if an exclusive licence is recorded in the Register for unitary patent protection or a request to record such a licence is pending before the EPO, it is not possible to record licences of right.
Unitary patent as an object of property
As an object of property, a unitary patent shall be treated in its entirety and in all the member states where it has effect as a national patent of the member state in which, according to the European Patent Register:
- the applicant had their residence or principal place of business on the date of filing of the European patent application; or
- where point (a) does not apply, the applicant had a place of business on the date of filing of the European patent application.
Where there are two or more applicants, point (1) above shall apply to the applicant indicated first. Where this is not possible, point (1) above shall apply to the next applicant indicated in the order of entry. Where (1) does not apply to any of the applicants, point (2) above shall apply accordingly.
Where no applicant had their residence, principal place of business or place of business in a contracting member state, the unitary patent shall be treated in its entirety as a national patent of Germany. In other words, German law should apply.
The national law to be applied is important for issues such as entitlement, employee invention disputes, assignments, licences and the rights of co-owners. This has important consequences because national laws differ significantly on such issues.
In the case of research or joint venture/collaboration agreements, it may be worth considering including a clause in any agreement to indicate the order of multiple applicants should a European patent application be filed. It may also be worth drawing up contractual agreements addressing assignment/licensing provisions in order to vary the national law which will be applied if the provisions under the national law which would be applied are undesirable for the parties involved.
Rights in a unitary patent
Rights in a unitary patent can only be transferred in respect of all the member states where it has effect. A unitary patent may be licensed in respect of the whole or part of the territories of the contracting member states. A licence will be recorded in the Register for unitary patent protection as an exclusive licence if the proprietor and licensee require; a licence will be recorded as a sub-licence where it is granted by a licensee whose licence is recorded in the Register for unitary patent protection.
Effect on existing European patents and national patents
The unitary patent system will have no direct effect on existing European patents. It will not for example be possible to convert existing European patents into unitary patents.
The unitary patent will also have no effect on the availability of national patents via the national patent offices.
Whether a unitary patent can co-exist for the same invention with a direct national patent will depend on national law. At the time of writing, it is proposed in Germany that double patenting be allowed with a German national patent and a unitary patent for the same invention. It is also proposed that a German national patent and a bundle national patent (that is, a European patent validated in Germany) be allowed to co-exist for the same invention, unless the bundle national patent has been opted out of the UPC. The opt-out is covered in our Guide to the Unified Patent Court.
Supplementary protection certificates (SPCs)
SPCs may be obtained in EU countries for patented medicinal products or plant protection products that require marketing authorisation (regulatory approval) before they can be released on the market.
Under current legislation, SPCs must be applied for at the national patent office of the country where protection is desired: there is no centralised European institution for grant of SPCs. This will continue under the unitary patent, as there is currently no provision for unitary SPCs. However, it will be possible to base national SPCs on a unitary patent, a current bundle national patent, or a direct national patent.
At the time of writing, proposals have been submitted to the EU Commission for a unitary SPC based on the unitary patent.
Infringement and freedom-to-operate
With a unitary patent the proprietor will have the right to prevent any third party from committing an infringing act throughout the territories of the member states where the patent has unitary effect. (More information and advice on these infringing acts can be sought from your D Young & Co representative.)
For example, the proprietor of a unitary patent will have the right to prevent third parties from supplying goods or ‘essential means’ for putting the invention into effect throughout the territories of the member states where the patent has unitary effect (provided the knowledge requirement is met). This protection is somewhat broader than that currently available with a validated European patent because the ‘supply’ and ‘putting into effect’ does not have to be within the same country.
Exhaustion is also applicable: the proprietor of a unitary patent cannot prevent any third party from committing acts which are carried out in relation to a particular product, after that product has been placed on the market where the patent has unitary effect by, or with the consent of, the proprietor.
Third parties seeking freedom-to-operate in Europe will need to consider carefully the scope of any unitary patent as well as the existence of any bundle national rights and independent national patents.
Relationship with the UPC and opposition / appeal
The unitary patent system will have no effect on the opposition and appeal procedure before the EPO, and decisions of the EPO’s Opposition Division and Boards of Appeal will apply to unitary patents.
Outside of the nine-month opposition period, the UPC must be used to challenge the validity of a unitary patent.
Benefits and disadvantages
Unitary patents will offer a number of advantages for proprietors compared to the current European patent system, but there will also be a number of potential disadvantages.
A unitary patent will for instance provide widespread coverage across multiple EU countries with the convenience of central administration, a single renewal fee and central enforcement and litigation. It will also have the added advantages of limited translation costs and cost-effective renewal fees when compared to widespread EU coverage obtained via either bundle national patents from a granted European patent or from directly filed national patents. These advantages are seen by many as desirable.
The limited translation costs are in contrast to obtaining a bundle of national patents where, depending on the countries chosen and/or the implementation of the London Agreement by those countries, there can be a several translations of either the full specification or the claims required.
For patent proprietors who normally validate their European patents widely, particularly in multiple countries each requiring a translation of the patent specification into a different language, the unitary patent potentially offers significant cost savings. Of course, for proprietors who validate in countries requiring limited translations and/or no translations at all (for example, France and Germany), such cost savings are likely to be limited.
Depending on the number of bundle national patents normally obtained from a granted European patent, the single renewal fee due for a unitary patent could also be cost-effective.
The schedule of renewal fees has been modelled on a ‘true top 4’ system. At a very general level, it is therefore expected to be cost effective for those patent proprietors who validate in four or more EPC contracting states.
Balanced against this cost-effectiveness is, however, the loss of flexibility to reduce renewal fees towards the end of the patent term. The unitary patent is an ‘all-in or all-out scheme’.
This means that countries cannot be dropped towards the end of the patent term in order to reduce scope of protection and reduce cost. Those renewal fees due towards the end of the patent term are typically more expensive than those in the early years. Cost-effectiveness of a unitary patent could therefore decrease as the patent life progresses and potentially outweigh the benefit during the earlier years.
Finally, central enforcement of a unitary patent in multiple countries via the UPC has to be balanced against the risk of central revocation. For important, business-critical patents, the risk of central revocation is likely to be enough to dissuade a patent proprietor from obtaining a unitary patent. For less important patents, this risk may be outweighed by the limited translation costs and/or cost-effective renewal fee.
Clearly the decision of whether or to obtain a unitary patent will be made on a case-by-case basis. There will need to be a balancing of risk and benefit including an assessment of cost-effectiveness.
|Widespread coverage.||Loss of flexibility to reduce renewal fee(s) and coverage over patent term.|
|Central administration.||Translation cost if normally validate in, for example, France and Germany.|
|Cost-effective renewal fee.||Risk of central revocation in untested court (UPC).|
|Central enforcement.||Potential increase in renewal fees if normally validate in, for example, France and Germany.|
|Limited translation costs.|