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The European patent with unitary effect or, shortly, the unitary patent is an alternative to the existing process of validating a European patent in individual countries. It is therefore not a ‘new’ patent, but an option to extend the validity of a granted European patent across all UPC countries in a single stroke.
The unitary patent is a single (indivisible) legal title extending to all UPC countries. This means that the unitary patent cannot be transferred in part. This also means that the unitary patent can only be enforced in a centralized court (the UPC). The UPC will also be the only court where a holder of a unitary patent can start an infringement case. Within the opposition period (9 months from the grant of the European patent), third parties can request revocation of the unitary patent before the EPO. After the expiry of the opposition period, the UPC will also be the only court where revocation proceedings can be started against a unitary patent. A decision of the UPC will have effect for all UPC countries.
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. The actual registration of the unitary effect (the designation “unitary patent”) will only be available at the start of the UPC through the entry into force of the UPC Agreement, i.e. not during the sunrise period.
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.
A unitary patent is available for European patents whose publication of grant occurs on or after 1 June 2023.
No, this is not possible. A European patent that has been granted before 1 June 2023 cannot be registered as a unitary patent. Also, European patent applications granted in the sunrise period cannot become unitary patents. In order to be registered as a unitary patent, a request for unitary effect must be filed with the European Patent Office within 1 month from the date of grant of the European patent. If that deadline is not met, the European Patent will be a “classical” European patent, that must be validated in individual EPC member states to be enforceable. The jurisdiction of the UPC will be available for such “classical” European patents, unless they are opted-out. European patent applications the grant of which will occur in the sunrise period can benefit from the possibility of delaying the grant proceedings.
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 of 12 years from 1 June 2023). 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.
Since 1 January 2023, the European Patent Office will make two transitional measures available ahead of the entry into force of the Unitary Patent system as of 1 January 2023.
The first transitional measure allows applicants to file early requests for unitary effect before the date of entry into force of the UPC (1 June 2023). For such requests filed in advance, the EPO will register the unitary effect immediately at the start of the system, provided all corresponding requirements are met.
Through the second transitional measure, an applicant may request to postpone the decision to grant. The postponement can be requested after the intention to grant has been announced, but not after the applicant has approved the text intended for granting. The postponement of the decision to grant can ensure that the date of the grant falls falls after 1 June 2023, so that the patent is eligible for unitary effect.
For European patents granted on or 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.
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 will be 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.
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.
No. The unitary patent is a single (indivisible) legal title extending to all UPC countries. This means that the unitary patent cannot be transferred in part. It can also not be limited, revoked or abandoned in respect of some UPC countries. You may, however, still be licensed to some or all territories of the UPC.