The Unitary Patent – all you need to know

Unitary Patent

The Unitary Patent (UP) is coming, and it will mean massive changes in the way European Patents are handled post-grant. It will more than likely come into force in the last quarter of 2022 (or perhaps with some inevitable delays in the first quarter of 2023). So now is the time for Applicants and Patent Attorneys to gather information on the UP and its implications, so that they can be fully informed when the time comes.   Here we briefly discuss the Unitary Patent, how to get one, and what this means for Applicants.

So, what is a UP and where does it cover?

A UP will be a single Patent that covers all EU Member States that have signed and ratified the UPC Agreement. Although there are currently 24 EU Member states that have signed the UPC Agreement, as of June 2022 there are only 17 that have actually ratified this Agreement.

Importantly, a UP will cover only the Member States that have ratified the UPC Agreement on the date of registration of the unitary effect of the UP. This coverage will remain regardless of subsequent ratifications of additional Member States. For instance, if the date of registration of the unitary effect was in June 2022 the UP would cover 17 Member States only.

For any Applicants interested in protection in the UK, after the withdrawal of the UK from the EU, the UK withdrew from the UPC Agreement. Therefore, protection in the UK will not be available via a UP and will need to be pursued via the current validation route if required.

How to obtain a UP

A UP will come from a granted European Patent via the current European patent system before the EPO. Importantly for Applicants, this means that there are no changes to the pre-grant process, nor will it impact Opposition and Appeal before the EPO.

Under the new UP system, when a European Patent is granted by the EPO, a Patent owner can request unitary effect to obtain a UP. The request must be filed at the EPO within one month from the mention of grant in the European Patent Bulletin. The request requires submission of an Official EPO Form and, most welcome among Applicants, there will be no Official Fee for requesting unitary effect.

The UP system will not replace the current system to obtain a national Patent via validation of a European Patent post-grant. Both systems will co-exist and so an Applicant will still have the opportunity to use the current system if they wish.

What are the benefits compared with the current system?

The main benefits are a simplified post-grant process and a lower cost.

In the current system, once granted a European Patent must be validated and maintained (by payment of a renewal fee), in each contracting state of interest to provide protection in that contracting state. Each national patent is then handled separately in terms of renewal fee payment, registering transfers and licences, infringement, and revocation actions.

The UP system avoids this by providing a simplified single step to obtaining a Patent that confers uniform protection in all (ratified) Member States.

In terms of the overall cost (requesting unitary effect of a UP and renewal payment) the more countries in which a Patent would have been validated in the current system, the greater the saving. The EPO has released some figures (found here) and according to this research, a UP will be less expensive than a European Patent validated and maintained in four of the current 25 Member States. Therefore, the UP will be particularly attractive for Patent Owners who would have otherwise looked for widespread protection in several contracting states using the current system.

For a UP only one renewal fee will fall due, and it will be payable to the EPO. The EPO has stressed that the renewal fee has been set at a competitive level and is especially attractive for the first 10 years (the average lifetime of a European Patent). It has been set at an amount corresponding to the combined renewal fee due in the four countries where European Patents were most often validated. Again, these figures can be found here.

Uniform protection means that the scope of the patent is the same in all states. It also means centralised enforcement and revocation in the Unitary Patent Court. This has its advantages as it ends the requirement to litigate in each contracting state but also disadvantages for the same reason as it places a Patent owner at risk of losing Patent protection in all Member States at the same time.

A UP may not be desirable for a Patent owner who does not desire widespread EU Patent protection and/or wishes to avoid centralised litigation.

Is there anything we can do before the UP comes into force?

A UP can be requested for a European Patent granted on or after the date on which the UPC comes into force. Therefore, it is not possible to convert current European Patents into UPs.

However, to benefit Applicants who may be close to obtaining a granted European Patent now, the EPO has introduced two transitional measures which will be applicable to applications in the final stage of the grant procedure during the transitional period. These transitional measures will be available once Germany deposits its ratification of the UPC Agreement and up until the date the UPC comes into force. It is not yet clear when this date will be, but it is estimated to be around September/October 2022.

The first transitional measure allows an Applicant to file an early request for unitary effect during the transitional period.

The second measure allows an Applicant to request a delay in issuing the decision to grant a European patent after dispatch of a communication under Rule 71(3) EPC and before approving the text intended for grant.

Unitary protection only applies to European Patents granted on or after the date on which the UP system comes into force. As filing an early request for unitary effect will not delay grant if the Patent is due to be granted before the UP system comes into force, a request to delay grant should also be filed at the same time.

If an application is nearing the final stage of the pre-grant procedure now, Applicants may wish to consider their options to delay this phase so that they can avail of the benefits of a UP.

The EPO information on the unitary patent transitional measures can be found here and this also provides some helpful examples.

Summary

The UP comes with several advantages but like any system, there are also some potential risks to these advantages. As with most aspects of law, whether a UP is of benefit or necessary will be assessed on a case-by-case basis. If you wish to discuss this in more detail, please contact your attorney at PurdyLucey.  

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