Unitary Patent FAQs
Does the introduction of the UPC mean that it is now required to file separately in non-UPC Countries (e.g. the UK) as well as at the EPO?
No, an EPO filing still covers all the same countries as previously covered (including the UK which remains a full member of the European Patent Convention). The UPCA only affects the post-grant arrangements. Thus, only a single patent application need be filed at the European Patent Office by a European Patent Attorney (e.g. J A Kemp) in the same way as before. On grant there are two options for making the European Patent effective. The first option is to validate the European Patent on a country by country basis as is now done. The second option is to (a) validate the European Patent as a Unitary Patent and (b) separately validate the European Patent on a country by country basis for those countries which are not part of the UPC (currently United Kingdom, Ireland, Spain, Switzerland, Turkey, Albania, Bosnia and Herzegovina, Cambodia, Croatia, Cyprus, Czech Republic, Greece, Hungry, Iceland, Liechtenstein, North Macedonia, Moldova, Monaco, Montenegro, Morocco, Norway, Poland, Romania, San Marino, Serbia, Slovakia and Tunisia).
What is a Unitary Patent?
A Unitary Patent - also known as a European Patent with Unitary Effect (EPUE) - is a single intellectual property right covering at least 17, and possibly up to 24, of the 27 EU countries. Spain, Poland and Croatia are the 3 EU countries that have not yet signed up to the complete Unitary Patent package. Non EU countries will not participate in the UPC and application for protection in such countries and enforcement in such countries is unchanged.
What is different about a Unitary Patent?
The Unitary Patent is a single patent right covering up to 24 participating countries, whereas under the present system, a granted European Patent becomes a number of individual national validations. Under the new system, patentees will pay a single renewal fee for all participating countries rather than one fee for each national validation. Further, a single court decision, e.g. on infringement or validity, will apply across all participating countries, not just one country.
How do I apply for a Unitary Patent?
You can apply for a Unitary Patent in the same way as a European Patent. The application procedure is administered by the European Patent Office (EPO). The only difference is that after grant you will be able to elect for the European Patent to become a Unitary Patent. Post-grant opposition filed within 9 months of the grant date will apply to Unitary Patents, as well as national validations, and will remain the only route to revoke a European Patent in all countries in one action.
Do I need a Unitary Patent to be protected in Europe?
In respect of the participating countries, the Unitary Patent is an alternative option to the national validations available after grant of a European Patent application. It is not mandatory for a European Patent application to become a Unitary Patent for those participating countries - after grant you will have the option of either a Unitary Patent or the national validations available at present. For EPC countries that are not participating, the normal national validation routes for European Patents will still be available. Individual national patents will also still be available via the national patent offices.
Will a Unitary Patent cost more or less than National Validations?
This depends on your situation, in particular the number of countries in which you require protection. For more than 6 countries the Unitary Patent is likely to save you money. From another perspective, the Unitary Patent will provide much broader coverage across at least 17 countries at a cost comparable to 6 national validations. Savings could initially be made with a Unitary Patent at the grant stage, in particular on translating the patent after grant. A Unitary Patent requires only a single translation whereas national validations may require translations into a number of different local languages. After grant, savings could be made with a Unitary Patent on the cost of renewal fees. A single renewal fee is payable for a Unitary Patent and that fee is set to match the renewal fees for DE, FR, GB and NL combined (renewing in 17 countries for the price of 4), whereas separate renewal fees are payable for each national validation. Since the cost of the renewal fee was decided, the United Kingdom (GB) has withdrawn its ratification of the UPC.
What if I only operate in a small number of European countries?
If you operate in a small number of countries, you might prefer to continue validating your granted European Patents individually in those countries. However, because the alternative option of a Unitary Patent is relatively cheap for the geographic coverage provided, wide-ranging protection might become a viable option.
How will I obtain protection in countries that aren’t participating in the Unitary Patent System?
Any countries that aren’t participating in the Unitary Patent system but are part of the European Patent Convention can be covered by validating the granted European Patent in those countries, as you do under the present system.
Which applications are eligible for a Unitary Patent?
Unitary protection is available for any applications that were filed after 1 March 2007, unless one or more designations for participating states have been withdrawn.
Where will a Unitary Patent be litigated?
A Unitary Patent is litigated exclusively in the Unified Patent Court (UPC). There is no option to opt out a Unitary Patent from the jurisdiction of the UPC.
Can a Unitary Patent be opposed at the EPO?
Yes, as for all European Patents, it is possible to file an Opposition at the EPO within nine months of grant. Validity of the Unitary Patent (and of any separate national validations obtained with the European Patent) will then be determined by an Opposition Division of the EPO. An appeal is available from the decision of the Opposition Division to the Boards of Appeal of the EPO. A final decision of the EPO in Opposition Proceedings to revoke a patent in its entirety will be binding on the Unified Patent Court (UPC) and on national courts for any national validations. It will also be possible to file a central revocation action against a Unitary Patent before the UPC at any time from grant (in practice, once a request for unitary effect has been filed). Opposition proceedings before the EPO and a central revocation action before the UPC may run in parallel.