Unitary Patent – Frequently Asked Questions
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 Albania, Bosnia and Herzegovina, Cambodia, Croatia, Cyprus, Czech Republic, Greece, Hungry, Iceland, Ireland, Liechtenstein, North Macedonia, Moldova, Monaco, Montenegro, Morocco, Norway, Poland, Romania, San Marino, Serbia, Slovakia, Spain, Switzerland, Tunisia, Turkey and United Kingdom).
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 will I apply for a Unitary Patent?
You will be able to apply for a Unitary Patent in the same way as you do now for a European Patent. The application procedure will be administered by the European Patent Office (EPO) in the same way as at present, except 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.
Will I need a Unitary Patent to be protected in Europe?
In respect of the participating countries, the Unitary Patent will be an alternative option to the national validations presently 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. 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 will be payable for a Unitary Patent which 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.
When will the Unitary Patent be available?
The Unitary Patent will be available once the Unified Patent Court Agreement (UPCA) has come into force. Germany is expected to deposit its instrument of ratification of the UPCA once it is clear when the UPC will be functional and this step could happen as early as the end of June 2022. The UPCA will come into force on the first day of the fourth month after German deposit of ratification. This could be as early as 1 October 2022. Unitary protection will be available for any applications granted after the UPCA comes into force which were filed after 1 March 2007.
Where will a Unitary Patent be litigated?
A Unitary Patent will be litigated exclusively in the Unified Patent Court (UPC). There is no option to opt out a Unitary Patent from the jurisdiction of the UPC.