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The Unitary Patent (or more formally European Patent with Unitary Effect) will be a single patent right across all participating states of the European Union which can be renewed by a single renewal fee payable to the EPO. It may be enforced across all of the participating states by a single action in the Unified Patent Court. Considerable cost savings can be made, both at the grant stage and in ongoing official renewal fees, by choosing the Unitary Patent route compared to a wide national validation programme on the same European Patent.
The Unitary Patent was created by two European Union (EU) Regulations. They will not have effect until the companion Unified Patent Court Agreement (UPCA) comes into effect. That requires its ratification by at least 13 states currently including the three EU countries by number of validations of European Patentees in 2007 (UK, France and Germany). However the role of UK is expected to be replaced by the Netherlands or Italy (which have ratified), on 1 January 2021, following expiry of the transition period of the UK leaving the EU.
The Unitary Patent will be effective in up to 24 EU states. It will only be available in selected EU states - Croatia, Poland and Spain are not participating. The precise states where unitary protection will be available will depend upon how many states ultimately ratify the UPCA. More detail on the territoriality of these provisions can be found here.
The existing non-unitary national validations of a European Patent will continue to be available both for participating and non-participating states. Unitary Patent Protection will simply be an alternative option in those states which are participating. Non-unitary protection will of course also still be available in EU states such as Spain and in non-EU states such as the United Kingdom and Switzerland which are not participating in the Unitary Patent.
A Unitary Patent can be obtained through application via the European Patent Office (EPO). The normal EPO filing, examination and opposition procedure will apply.
It will not be necessary to indicate that unitary protection is required on filing. If unitary protection is required this may be requested within one month of grant. By the same one month deadline it will also be necessary to file one translation of the complete patent. Where the patent is in English the patentee may choose any other EU language for the translation. Where the patent is not in English the translation must be into English. The translation will be for information purposes only (but it should not be a machine translation).
The translation requirement is actually a transitional arrangement which will lapse 12 years from commencement. It may lapse earlier if it is considered that high quality machine translations are available for all EU official languages
This translation regime will therefore be advantageous as it avoids the need to prepare multiple translations which would otherwise be required if a European Patent is to be validated widely. It does not of course avoid the need for translations in non-participating states such as Spain.
Unitary Patent Protection may be requested for any patent application (including those pending at commencement) which designates all of the EU states which ratify the UPCA and which has the same claims for all states. As almost all EPO applications designate all EPC states (and have a single set of claims) this means that Unitary Patent Protection will be an option at least in principle for almost all pending applications. However applications will require a filing date of 1 March 2007 or later, this being the date when the last participating state Malta joined the EPC.
Renewal fees for Unitary Patents will be payable to the EPO on an annual basis. The renewal fee will be due at the end of the calendar month containing the anniversary of the filing date. It may be paid up to six months late with a surcharge. If the renewal fee is not paid in that period, then re-establishment will be possible but this will require a demonstration that the deadline was missed in spite of all due care having been taken.
It is expected that the official renewal fees will be based on proposals for the "true Top 4" i.e. matching the level of official renewal fees of the 4 participating states (at the time the level of fees were agreed) in which the most patents are validated, i.e. UK, France, Germany and Netherlands. The proposed official renewal fees are:
|10||1 175||20||4 855|
|11||1 460||Total||35 555|
The level of official renewal fees means that for patents where, under the existing arrangements, four or more of the participating states would be of interest for validation at grant then unitary protection is at least an option to consider. However once unitary protection has been selected the patentee is committed to this level of renewal fees. The level of renewal fee expenditure cannot be reduced later in the life of the patent by reducing the number of states as it can be for a national validations of a European Patent. Thus perhaps for cases where the number of states of interest is only just over this threshold, then unitary protection may not be the best option.
Of course a range of other factors will need to be considered when deciding whether or not to select unitary protection for any particular case which grants once the provisions commence. Some of these are discussed here.
Patents where unitary patent protection has been selected will be litigated in the Unified Patent Court. A single action will be used to enforce the patent against an alleged infringer in all of the participating states. This may lead to a single injunction across all the participating states. Equally, a single action can be used to revoke a Unitary Patent in all states. A Unitary Patent will thus provide uniform protection across all of the participating states. The Unified Patent Court is discussed in more detail here.
Where Unitary Patent Protection is selected there is no option to opt out of the Unified Patent Court. By selecting a Unitary Patent, the proprietor is in effect positively choosing to use the new Unified Patent Court. This is therefore another factor to consider when deciding whether to select unitary protection. Opting out is only available for national validations of European Patents; a discussion of opting out (and potentially opting back in) for such national validations can be found here.
The two Regulations No. 1257/2012 relating to the Creation of Unitary Patent Protection and Regulation 1260/2012 relating to the Translation Arrangements for Unitary Patent Protection can be found here and here.
Please do not hesitate to contact us if you require any further information on this or any other topic relating to the provisions for the Unitary Patent or Unified Patent Court or if we can be assistance in any way.
For more information please contact Martin Jackson