Unitary Patent

A Brief Guide to the Proposed European Unitary Patent (UP)

What is the Unitary Patent system?

The Unitary Patent (UP) system will allow patent applicants to get a single patent covering at least 17 European countries on launch. This includes major countries such as Germany, France, Italy and the Netherlands. Since the resulting Unitary Patent will be licensed and enforced as a whole, this should make it easier to get patent protection covering most of Europe.

The ability to enforce each Unitary Patent as a whole will allow a single injunction to cover all 17 plus countries in the UP system and should also allow higher damages to be obtained in a single infringement action. On the other hand, a Unitary Patent found to be invalid will be revoked as a whole, whereas under the current system the national parts of European patents can only be revoked individually.

How can I get a Unitary Patent?

Once the system begins, you will be able to obtain a UP as an option when a patent is granted at the European Patent Office (EPO). This means that the process of applying for and obtaining a European patent will be the same, but there will be an additional option at the end of the process. You will still be able to choose a set of separate European national patents instead if you prefer. The existing system will operate in parallel with the UP, so you will also be able to go for a UP plus a selection of other individual European countries on a single European patent.

Importantly, the timescale for choosing whether to get a UP at the end of the European patenting process will be shorter than the current timescale for choosing which European countries to get protection in (known as validating a European patent). We will have a period of one month after grant of the patent at the EPO in which to apply for a UP, as compared to 3 months for the conventional validation process.

You will also need to file a full translation of the patent into another EU official language to obtain a UP. Due to the relatively short timescale, work on the translation should usually start soon after grant of the European patent is announced.

In practice, you will simply need to ask us to obtain a UP around the time of grant and ideally when we send you the notice of allowance. We can then handle the necessary paperwork and do the translation at the same time as we translate the claims into French and German for grant. If we are handling prosecution of the European patent then we will let you know the options well ahead of the deadline.

When will the Unitary Patent start?

The new system is expected to start operation early in 2023. The actual start date will be announced at least three months ahead of that date, perhaps late in 2022.

It will be possible to make an early request for a UP from when the start date of the UP system is announced. This will only be possible for patents that reach the allowance stage in the window between the UP start date being fixed and the actual start date. It will also be possible to delay the grant of such patents until after the UP begins so that they can be granted as a UP. Please let us know if you would like more details on how this transitional system will work at the EPO. For patent applications we are already handling, we will of course let you know the options at the time of allowance.

Which countries are included?

The full list of countries that have agreed to join the UP system is:

Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia and Sweden.

Not all of these countries will be covered by UPs from the start however. Also, we understand that Poland will not participate in the UP system for the foreseeable future.

The list of countries that will be covered from the start of the system is:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

Which major European countries are not included?

Examples of larger countries that are members of the European Patent Convention but will not be part of the UP system are: UK, Spain, Switzerland, Turkey, Norway and Croatia. These countries can still be covered by using the current European patent system.

For example, a common policy on grant of a European patent at the EPO might be to obtain a UP plus a conventional validation in the UK.

What happens when a new country joins?

When one of the remaining 8 countries in the full list above joins the UP system, all Unitary Patents granted from that time onwards will also cover the additional country. However, Unitary Patents already granted by the time the new country joins will not be extended to cover that country. This means that newer Unitary Patents will cover more territory than older patents as the system develops.

What is the cost of a Unitary Patent?

The main initial cost of getting a UP will be the need to translate the patent into another official EU language. We will also charge a fee.

Once you have a UP, we will need to pay a renewal fee every year for the life of the patent. These fees are low for the first 5 years (costing roughly the same as the renewal fees for Germany alone at around 600 EUR in total) and increase to be around 2.5 times the renewal fees for Germany over the last 5 years of the patent’s life.

A good comparison would be the currently popular strategy of validating a European patent in France, Germany and the UK. The UK will remain outside the UP system of course so there is no change there and a conventional validation must still be used. Compared to the cost of validating a European patent in France and Germany, including the costs of translation and the renewal fees up to 5 years from the patent filing date, the UP is only slightly more expensive. We think this represents excellent value for protection in at least another 15 European countries, especially when compared to the total cost of obtaining the patent in the first place. The UP is an even better value proposition if you would normally validate in Italy, as the translation requirement for the UP is the same as for Italy alone.

Similarly, validation in Spain requires a translation of the whole specification. If you want to validate in Spain, the Spanish translation can also be used to get the UP.

On the other hand, the renewal fees for the UP increase significantly over the lifetime of the patent as mentioned above, so a UP becomes gradually more expensive to maintain relative to validations in France and Germany as the patent ages. Whereas it is possible to drop one or more countries over the lifetime of the patent to reduce costs using conventional validations, the UP must be maintained as a whole or not at all.

In summary, whether or not the UP represents good value for money will depend on how many countries you want protection in and how long you expect to maintain the patent for. If you only need protection in one or two UP countries and expect to maintain the patent for its full lifetime then conventional validations are probably a better option. On the other hand, if you want protection in multiple UP countries or only expect to maintain the patent for a few years after grant then the UP is likely to offer better value than the current system. It will be fairly straightforward to calculate the better option in individual cases once we have the case details.

Please let us know if you would like advice on whether the UP system will be more or less cost effective than the current system for your future European patent filings.

What will the effect of the Unitary Patent be?

In essence, the Unitary Patent aims to provide a simple ‘one stop shop’ for patent protection in Europe. It will offer a single patent right covering almost all of the European Union with simpler post-grant procedures and a single annual renewal fee.

Under the present system, after the nine-month opposition period has expired, the individual European Patent validations may only be attacked separately before the respective national courts and may not be ‘knocked out’ centrally. In the same way, damages and injunctions for successful infringement actions can only be awarded on a country by country basis.

A Unitary Patent, however, may be attacked centrally. If successful, a central attack will result in the loss of the whole patent across all member states, as opposed to losing a single national right. In the same way, however, if an infringement action is successful, damages and injunction covering all participating member states may be awarded.

Thus, the Unitary Patent has the advantage that injunctions and damages of much larger territorial scope can be awarded with much cheaper litigation and the disadvantage that all patent rights can be lost in a single court action. Since the Unified Patent Court has not yet been established, it is impossible to say how patent friendly it will be compared to the various national courts.

Which court will have jurisdiction over the Unitary Patent?

The Unified Patent Court (‘UPC’) will have sole jurisdiction over the enforcement of Unitary Patents.

The UPC will hear all actions which relate to the infringement and validity of Unitary Patents, issues relating to SPCs, revocation actions, actions relating to provisional protection, matters relating to damages awarded under provisional protection and the like, matters relating to injunctions, and actions against EPO decisions which relate to Unitary Patents.

It is intended that by providing a single court for enforcing patents across all member states, the process for enforcement of Unitary Patents will be both streamlined and cost-effective.

How should I prepare for the Unitary Patent?

We recommend deciding ahead of time on a policy for choosing which patents will use the UP system and which will use the current “classical” European patent validation system. For example, you might want to use the UP system plus a validation in the UK for less critical patents, whereas you might want to use a selection of conventional validations followed by an opt out (discussed below) for your most important patents. If you are on our mailing list, we will let you know when a start date for the UP is announced.

Please let us know if you would like advice on developing a cost-effective strategy for European patent validations after the UP system comes into effect or to be added to our mailing list. Please contact us at mail@mskpatents.com with any questions you may have, or to arrange a consultation.

Further information and links

If you have any questions on this issue or any other aspect of patent law, please contact mail@mskpatents.com.

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