It depends on the number of countries were you would otherwise have validated your patent. For example, patent holders with business interests in only a few European countries will benefit less from a unitary patent than patent holders with a business interest throughout the EU.
The initial costs of a unitary patent involve the fees of service providers, and the translation costs (in a transitional period until 1 June 2035). No official fees to the EPO are due for requesting the unitary effect. But an important cost factor of the unitary patent is the yearly renewal fee payable to the EPO. Focusing solely on the renewal fees, the EPO set these at a level corresponding to the combined renewal fees due in the four countries where European patents were most often validated in 2015 (Germany, France, the Netherlands and the UK). Now that the UK does not participate, national renewal fees are still payable to the UK if a patent is to be validated and kept in force in these top-4 countries. It follows that the unitary patent option is somewhat more expensive than the sum of national validations.
However, the upside is that the combination of a unitary patent allows central enforcement in an additional 14 EU member states against no additional costs. Considering that national validation fees are negligible, whereas renewal fee payments with associated transactional costs in a large number of countries can be substantial, the unitary patent will result in cost savings when a European patent would otherwise have been validated in at least 4 EPC member states participating in the UPC (e.g. France, Germany, Netherlands and Italy). Over the 20-year patent term of a unitary patent, the renewal fees will be in the region of €35,500. In comparison, the renewal fees for a national bundle patent in all 17 UPC states would exceed €100,000 over that same period.
No. The territory of your unitary patent is set at the time the request for unitary effect of your newly granted European patent is registered with the EPO. Your unitary patent is enforceable in the countries that have ratified the UPCA at that moment. The territorial coverage of a unitary patent will stay the same for its entire lifetime, irrespective of any subsequent ratifications of the UPC Agreement after the date of registration of unitary effect by the EPO. Hence, there will be no extension of the territorial coverage to other Member States which ratify the UPC Agreement after that date.
No. The unitary patent is a single (indivisible) legal title extending to all UPC countries. This means that the unitary patent cannot be transferred for the individual countries. It can also not be limited, revoked or abandoned in respect of some UPC countries. However, you can license with respect to some or all UPC countries..
For European patents granted after 1 June 2023, the patentee can opt for registration as a unitary patent instead of validation in the participating countries. In this way, the patent will be immediately valid in all UPC countries. It should be noted that the unitary patent does not extend to the whole EU, since some EU countries do not participate in the UPC. Separate national validations will thus remain necessary for EPC contracting states that are not UPC countries. These countries include Albania, Cyprus, Croatia, Czech Republic, Greece, Hungary, Iceland, Ireland, Monaco, North Macedonia, Norway, Poland, Romania, San Marino, Serbia, Slovakia, Spain, Switzerland/Liechtenstein, Turkey and the United Kingdom.
The process of filing, examination and grant of European patents before the European Patent Office (EPO) will remain the same.
A European patent application is filed with the EPO, and an examination is performed by the EPO. Once the European patent is granted, the European patent may be registered as a unitary patent by filing a request for unitary effect. European patents granted after 1 June 2023 are eligible.
After the grant of the European patent (from 1 June 2023), the period for filing the request for unitary effect is only one month. The request must be filed with the EPO. No extension of this term is available. If the patent language is EN, a translation of the entire patent specification in an EU language must be filed in that same period. If the patent language is German or French, the translation must be in English. Failure to file the request for unitary effect within the one month time limit will prevent the European patent from becoming a unitary patent. Failure to file a translation is a correctable deficiency in the request.
The opt out may be filed at any time during the patent's lifetime, but only during the transitional period until 1 May 2030. Should you consider an opt-out, it is important to note that an opt-out is no longer possible if an action has been filed by a third party in respect of your European patent before the UPC. Likewise, withdrawing an opt-out (to get back in with the UPC) is no longer possible if an action has been filed before a national court concerning an opted out EP patent. Therefore, should a competitor file an invalidity action with the UPC on the first day of operation of the new court, you will no longer be able to opt out.
No. If an action has been started before a national court in respect of a patent or application before the registration of a withdrawal of the opt-out, the withdrawal is ineffective in respect of that patent or application, irrespective of whether the action is pending or has been concluded. Hence, opting in is no longer possible.
In that case, your earlier the opt-out is deemed withdrawn. The Registrar will enter a withdrawal of the opt-out in the register and you will have opted-in as of the date of registration of the unitary effect, without the possibility to file another opt-out for the patent.
Yes. But when filing the request for opt-out, a declaration of proprietorship must be produced in such a case, indicating that the person filing the opt-out is the proprietor or applicant or is entitled to be registered as proprietor or applicant under the law of each Contracting Member State, and is therefore entitled to file the opt-out.
An important difference pertains to the renewal fees. For a European patent that is no unitary patent, renewal fees must be paid yearly to each national patent office separately if the patent is to be kept in force (both with and without opt-out). On the other hand, only a single renewal fee needs to be paid each year for a unitary patent.