What is the Unitary Patent?

What is a Unitary Patent?

The EU Unitary Patent (UP) is to be a single patent right providing patent protection across participating European Union member states. It will cover much of geographical Europe, including France, Germany, Italy, Sweden and the Netherlands, but exclude various commercially important countries such as the United Kingdom, Spain and Switzerland which either cannot participate because they are not part of the European Union or do not wish to participate for other reasons. The UP will come into existence on 1 June 2023.

By "Unitary" it is meant that the patent right will be treated as a single indivisible piece of intellectual property providing uniform protection in the participating countries. It will be enforceable - or challengeable - as a single right through a single legal action. Because of its unitary nature, a UP will be owned and transferred between owners as a single indivisible unit. A new Unified Patent Court (UPC) is being created which will have sole responsibility for many matters concerning Unitary Patents, notably infringement actions, declarations of non-infringement and revocation actions.

Geographical Scope

At launch, the Unitary Patent is expected to cover the following 17 EU countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden. The following 5 countries are expected to participate during the next few years: Cyprus, Greece, Ireland, Romania and Slovakia.

This leaves numerous European countries which are currently unable or unwilling to participate in the UP and so, for most patent-owners, the UP is not going to have sufficient scope to suffice as their only European patent right. Nevertheless, the UP will be useful for some, if not all, patentees.

Unitary Patents are linked to European Patents

The application procedure for Unitary Patents will be administered by the European Patent Office. A UP will be obtained by following the normal European patent application procedure until grant and then registering a Unitary Patent with the European Patent Office within a short (one month) deadline of grant. The Unitary Patent can be seen as a new option that may be chosen on grant of a European Patent. Applicants who have filed a European patent application before the UP comes into effect should anyway be able to obtain a UP provided that their European patent application does not grant too soon.

The European Patent Office will continue to administer Unitary Patents after grant, maintaining a register and administering the single annual renewal fee payment which will be required to maintain a UP in force. This will avoid the current requirement to register assignments and licences before multiple national Patent Offices and to pay multiple (albeit smaller) renewal fees in different countries. European patents which have been registered as UPs will continue to be subject to the central opposition and limitation procedures which apply to European patents.

The Unitary Patent will sit alongside existing options

The existing arrangement in which granted European patents take effect in individual European Patent Convention member states will remain. Most applicants who register a UP will also wish to validate their granted European patent in one or more other European countries which are not participating in the UP, for example most applicants will wish to validate in the United Kingdom. Furthermore, applicants who do not want to register a UP will instead be able to validate their European patent in some or all of the countries covered by a Unitary Patent, for example they might validate their European patent in France and Germany instead of registering a UP.

Still further, the central opposition and limitation procedures for European patents will continue to apply to European patents whether or not they are registered as Unitary Patents. Accordingly, the UP is very much a new option, with existing post-grant arrangements for European Patents remaining unaffected.

Language issues

One of the reasons that it has taken decades for a right like the Unitary Patent to be negotiated and to come into effect has been disagreement over language issues. The recent increase in the quality of automatic computer translations has enabled these disagreements to be resolved to some extent. As with existing European patents, an application leading to a UP will be published and granted in any one of the existing official languages of the European Patent Office, i.e. English, French or German, with translations of the claims into the other two official languages published on grant. This means that a Unitary Patent will only be published in full in a single language. However, for the first six years (potentially extendible to twelve years) the applicant will however be required to submit a translation into a second language. If the official language used in the application procedure was French or German, then the additional translation must be into English. If the official language was English, then the additional translation must be into any other official language of an EU state. EU SMEs who file applications in languages other than English, French or German may claim compensation for their additional translation costs.

Cost

In order to obtain a Unitary Patent it is first necessary to incur the usual costs of obtaining a European patent. Registering a granted European patent as a Unitary Patent will be inexpensive, significantly cheaper than validating a granted European patent in several individual countries. Renewal fees have been set to be about the same as renewal fees for validations in four EU countries. For some applicants, who typically validate patents in many countries, this will be a substantial cost saving, but many applicants currently validate European patents in only a small number of EU countries and they may find Unitary Patent renewals to be more expensive. Furthermore, it is quite common for patent holders to allow their European patent to lapse in some, but not all, countries towards the end of the 20 years maximum term of the patent, as renewal fees increase annually, but this option is not available for the Unitary Patent. Accordingly, the Unitary Patent will save money for some applicants, but only some.

Application for Unitary effect

The process of registering a granted European patent as a Unitary Patent will usually, but not always, be straightforward. There are a number of requirements which, if not met, will result in the registration being refused:

• A request must be correctly filed along with a suitable translation within one month of the date of grant. If this deadline is not met, it is possible to apply for re-establishment of rights within two months of the original deadline, with additional cost.
• The claims of the European patent must be the same for each of the 'participating Member States'.
• Each proprietor, or their representative, must sign the application form. If there are multiple proprietors, they must name a single proprietor or representative as common representative. This may present problems where there are multiple proprietors whose signatures must be obtained, or where an assignment or transfer has not been recorded or it is otherwise unclear who are the proprietor(s).

Transitional Measures

To encourage early uptake of the Unitary Patent, the EPO has introduced two transitional measures which will run from 1 January 2023 until the start of the Unitary Patent system. During this time, it will be possible to file an early request for unitary effect with the European Patent Office in respect of any European patent application for which an Intention to Grant letter (Rule 71(3) communication) has been issued. Conversely it will be possible to request a delay to the decision to grant a European patent which should have the effect of delaying the formal decision to grant until the Unitary Patent comes into force.

Representation

Although as UK patent attorneys we are frustrated that the UK is not participating in the Unitary Patent, we are also European Patent Attorneys and so have rights to register and act as address for service for UPs and to file and defend legal actions before the Unified Patent Court in the same way as other European Patent Attorney firms throughout Europe. Accordingly, we remain fully engaged and involved with this new right.

If you have any questions about Unitary Patents please ask your usual contact at Hindles if you have one or contact us by email.