What is a Unitary Patent
Unitary Patent (UP) will be a single Patent that covers all EU Member States that have signed and ratified the Unified Patent Court (UPC) Agreement.
Currently, the number of ratified or “participating” Member States stands at 17. These countries are Austria, Belgium, Bulgaria, Denmark, Germany, Finland, France, Estonia, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Sweden, and Slovenia. Ireland has not yet ratified the agreement but is expected to hold a referendum in 2023 or 2024 seeking ratification. Croatia, Poland, and Spain have indicated that they are not joining the UPC. The UK is not party to the agreement since Brexit.
- A Unitary Patent will provide uniform protection in participating Member States.
- The Unified Patent Court has exclusive jurisdiction over Unitary Patents.
- The Unitary Patent is not replacing the current validation system.
- It will still be possible to validate a European Patent in contracting states of interest if desired.
How to obtain a Unitary Patent
Under the new Unitary Patent system, when a European Patent is granted by the EPO, a Patent owner can request unitary effect to obtain a Unitary Patent. It is important to note that there are no changes pre-grant.
The request must be filed at the EPO within one month from the mention of grant in the European Patent Bulletin.
A UP can be requested for a European Patent granted on or after the date on which the Unitary Patent Court (UPC) Agreement comes into force, i.e., on or after 1st June 2023*.
What about non-participating Member States
Protection in “non-participating” Member States can be sought using the current system of validation. This can be used alongside a Unitary Patent. For example, an applicant can obtain a Unitary Patent and validate separately in Ireland and/or in the UK if desired. This will provide protection in the participating states of the UPC, and in Ireland and/or the UK.
Why or why not?
The Unitary Patent comes with several advantages but like any system there are also some potential risks to these advantages. The main benefits to the Unitary Patent system 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.
One annual renewal fee is payable to the EPO in EURO. 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).
Uniform protection means that the scope of the patent is the same in all participating Member States. This means centralised enforcement and revocation. This has its advantages in that 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 participating Member States at the same time.
In terms of 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 24 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.
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.
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.
*These dates are based on the current state of play and are therefore subject to change.