The unitary patent: EU-wide protection for your ideas
Patent protection in Europe has existed long before the plans for a unified patent system were created. Under the conventional system, companies or inventors apply for a European patent (EP) at the European Patent Office (EPO). This patent is a bundle of national partial patents.
For the patent to be effective in the individual countries, it has to be validated in each of these countries individually. If the patent is challenged, transferred, enforced, or nullified in one of these countries, this has no effect on the patent’s legal standing in any of the other countries.
The European patent with unitary effect (“unitary patent”) will offer a different option: it will provide uniform patent protection and have the same effect in all participating EU member states. There is one exception when it comes to licensing: licenses can be limited by territory.
The option for a traditional European patent will still exist – namely, by filing an opt-out application. It is possible to combine a European patent with unitary effect, a traditional EP bundle patent (e.g. for non-EU states or states not participating in the UPC such as Spain, Poland, Croatia), and a national patent.
Simple and comprehensive: applying for the unitary patent
Applying for a unitary patent is relatively straightforward: first of all, you apply for a European patent (EP) at the European Patent Office (EPO). The application must be filed with the EPO in writing or electronically and must meet the patentability requirements in terms of form and content.
Once the EP has been granted, you can submit a “request for unitary effect”. This must be done no later than one month after publication of the mention of grant in the European Patent Bulletin. The application allows you to obtain a patent in one single procedure, centrally conducted by the EPO, which will give you unitary patent protection in up to 24 EU countries in the future.
A new register exists at the EPO for unitary patent protection, which contains information on the legal status as well as licenses, transfers of rights, limitations, revocations, and lapses of unitary patents. As the patent holder, you can register transfers of rights and licenses centrally with the EPO. This does away with the need for parallel procedures in the national patent registers of the individual countries.
The EPO has compiled further information on obtaining, maintaining, and managing the unitary patent in a helpful helpful guide.
6 further EU member states have signed the UPCA, so their ratification – i.e. confirmation binding under international law – is likely. The United Kingdom has withdrawn its ratification as a result of Brexit. Spain, Poland, and Croatia are not participating in the unified patent system for the time being for various reasons.
For you as a patent holder, this means: your unitary patents will initially be valid and effective in 18 participating UPC member states, which is expected to increase to 24 later on. Note, however, that if a new country ratifies the UPCA, the protection of the patent already existing will not be automatically extended to that country.
How much does a unitary patent cost?
A unitary patent will cost less than a traditional European patent (EP) in many cases. This is because the EP not only incurs annual fees, but also validation and maintenance costs. These include, in particular for an EP, translation costs, fees charged by national patent offices, and fees charged by national lawyers or other service providers.
All things considered, a unitary patent, will typically be cheaper than an EP validated and maintained in four or more of the participating member states. For you, this means that the more EU countries you consider to be a part of your IP strategy, the more it makes sense to apply for a unitary patent.
For example, the costs of a traditional EP validated in the four countries with the most patents validated and maintained for 12 years can total € 11,850, according to EPO estimates. In comparison, although the annual fees for a unitary patent will be somewhat higher for the same period of time, the transaction costs will be lower. The total cost of a unitary patent will be € 11,260: a savings of 5% compared to the cost of a traditional EP. If patents are maintained for 15 years, this saving increases to 8%.
Another advantage and a relief for you as a patent holder: the annual fees for a unitary patent will be paid centrally and in a single currency to the EPO. They will no longer have to be paid to various national patent offices.
The unitary patent: pros and cons
Whether you make use of the unitary patent, prefer to stick with traditional European patents and/or national filings, or select the best route for each of your patents on a case-by-case basis, your decisions will be governed by your individual patent strategy. The unitary patent has many advantages. For example, the fact that it is currently effective uniformly in 18 EU states – with potential for up to 24 – and can be enforced across borders.
The potential cost savings and reduced administrative work are also clear advantages of the new system.
However, if you do not wish to extend your patents to the whole territory covered by the UPC, or if you prefer to stay with the predictable quality of national proceedings, the UPC might not be right for you at this time and you should consider taking a more conventional route to patent protection. When considering your options, you should also keep in mind that the UPC brings with it the possibility of a central invalidity attack.
Regardless of your decision, you can count on a high level of expertise, especially at the UPC divisions in Germany, where you will be able to enforce your patents with legal certainty in the event of a dispute.
