The unitary patent
The new unitary patent is a single patent which will be granted with equal effect through each and every participating member state and will be maintained as a single unit. It can be regarded as a supranational validation instead of a national validation of a European patent.
The unitary patent will be granted by the European Patent Office (EPO) like any European patent. If the applicant wants the European patent to become a unitary patent, he/she will have to register the European patent as a unitary patent within a period of 1 month after grant. During a transitional period, a translation of the patent into English (if the patent was not already in English) or into any other European language (if the patent is in English) will have to be provided together with the request.
Infringement and validity decisions concerning a unitary patent will apply equally to all participating member states.
With regard to transfers and licenses, the unitary patent will only be able to be transferred as a whole. However, it will be possible to license it in respect of the whole or part of the territories of the participating member states.
Territorial scope of the unitary patent
The unitary patent will have unitary effect only in those countries that are unitary patent member states at the time of registering the unitary patent.
The conditions to be a unitary patent member state are the following:
(i) To participate in the enhanced cooperation for the creation of unitary patent protection at the time of application for registration of the unitary effect; and
(ii) That the Agreement on the UPC is in force in the member state at the time of registration of the unitary effect.
The number of unitary patent member states will grow over time. Thus, unitary patents will differ in the territorial scope depending on the time of their registration.
How to get a unitary patent
The substantive requirement for registration of the unitary effect is that the European patent is granted with the same set of claims in respect of all participating member states. This means that all these countries must be designated in the European patent. Withdrawal of designations or limitation of the claims with respect to any of the designated states would prevent an applicant from being able to obtain a European patent with unitary effect.
Concerning the formal requirements, the request for unitary patent protection should be filed at the EPO no later than 1 month after the date on which the mention of the grant is published in the European Patent Bulletin. The request must be in writing in the language of the proceedings.
There is no official fee due for the request of a unitary patent.
Upon registration of the unitary effect, the unitary patent will have unitary character retroactively from the date of publication of mention of grant in the European Patent Bulletin, in all participating member states at the time of registration.
Cost of a unitary patent
The costs of the unitary patent up to grant will be the same as for any other European patent. However, the validation costs might be considerably reduced after grant since only one translation will be required during a transitional period.
Concerning the renewal fees, the renewal fee scale is based on the sum of the renewal fees paid nowadays for the four most frequently validated countries.
This means that the renewal fees will be less than 5.000 EUR during the first 10 years of the patent. The cumulative total to be paid over the full 20-year term will be 35.555 EUR.
SMEs, natural persons, non-profit organisations, universities and public research organisations that have their residence of principal place of business in an EU member state, will benefit from a €500 ‘compensation scheme’ if the European patent application or Euro-PCT application leading to the Unitary Patent have been filed in an official EU language other than English, French or German. This is intended to mitigate the costs associated with providing the translation during a 6-12 year transitional period.
A reduction of 15% of fees can be obtained if a patent proprietor is willing to license his patent and register a license of right before the EPO. This means that the renewal costs for a patent could be reduced over the maximum 20-year lifetime of a patent by around 5.000 EUR.
How the existing patents will be affected by the new system
When the Agreement on the UPC is in force, the new system will apply to any European patent. However, during a transitional period, it will be possible to register an opt-out to avoid the UPC jurisdiction of the existing “classic” European patents, even before the Agreement is in force.
Any European patent that will be within the 1 month period after grant can be a candidate to be registered as a unitary patent provided it accomplishes the substantive and formal requirements mentioned above.
Options to get patent protection in Europe after the entry into force of the new system
Once the unitary patent package (UP & UPC) enters into force, there will be three options to get patent protection in Europe:
a) Unitary patent
b) Classic bundle of national validations of the European patent
c) National patents granted by national offices
The unitary patent will not extend to non-participating member states, to countries that have not ratified the Agreement on the UPC, or to countries outside the European Union. If it is desired to cover these territories as well, a combination of the above options such as a unitary patent and national validations of the European patent will have to be used.
Transitional measures of the EPO before the entry into force
The EPO has already announced that, with a view to supporting patent applicants in an early uptake of the Unitary Patent, it will introduce transitional measures with respect to European patent applications having reached the final phase of the granting procedure. These measures will be made available ahead of the entry into force of the Unitary Patent system until the end of the period of the provisional application.
Thus, it will be possible to file early requests for unitary effect for those patents eligible, as well as to file a request for 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 granting for those patents that would be granted before the start of the new system.