The European Unitary Patent (Unitary Patent) is an IP right that has been available to 17 participating EU member states (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden) since 1 June 2023. Since 1 September 2024, following ratification of the UPC (Unified Patent Court) Agreement, Romania is the 18th member country of the UPC. This means that all Unitary Patents registered since that date also apply in Romania.
While a classic European patent (so-called “bundle patent”), once examined and granted by the European Patent Office (EPO), breaks down into national parts in currently up to 39 member states and 5 extension/validation states, which also administer these patents individually, the Unitary Patent remains a singular property right and is administered by the EPO as the central office.
How is a unitary patent obtained?
The granting procedure will continue to be centralised at the European Patent Office. Following the decision to grant by the EPO, the unitary effect (i.e. a unitary patent) can be requested for now 18 participating states. Alternatively, a national validation can also take place as before (“bundle patent”). Nothing will change for countries that do not participate in the Unitary Patent. Here, national validation or extension can also take place in parallel with the Unitary Patent.
What are the costs of the unitary patent?
The costs of the Unitary Patent, both for the application and the renewal fees, are similar to those incurred for validation in four of the participating states, so that the total costs of a Unitary Patent during its term are significantly lower than for a European patent validated and maintained nationally in four or more member states. A complete translation of the patent specification must be submitted with the request for unitary effect, either in English if the language of the proceedings before the EPO was German or French, or in any other official language of an EU member state if the language of the proceedings was English. Irrespective of this, there is still an obligation to submit the patent claims in the other two official languages at the end of the grant procedure.
What are the advantages of the unitary patent?
Protection can be obtained in the 18 participating countries with one application. The costs previously incurred in many countries for appointing national representatives and national translations (sometimes of the complete patent specification) are no longer necessary.
Administration is simplified. Annual fees do not have to be paid separately in all participating states to maintain the patent; instead, fees are paid centrally to the EPO. Transcriptions can also be made centrally.
What are the disadvantages of the unitary patent?
For the Unitary Patent, infringement and revocation proceedings are conducted centrally before the Unified Patent Court (UPC). This means that a negative judgement (e.g. declaration of invalidity of the patent) also has an effect in all participating states, i.e. the property right can not only be enforced centrally, but also attacked centrally and, if necessary, destroyed.
Does the start of the European Unitary Patent affect existing European patents?
In future, the UPC will also rule on disputes relating to classic European patents (“bundle patents”) for all participating member states. This means that there is also the possibility of a centralised nullity attack for classic European patents. Previously, an existing European patent could only be challenged nationally in each individual validation/extension state, which is an advantage for patent proprietors.
However, this transfer of jurisdiction for patent disputes to the UPC can be excluded for a transitional period of at least 7 years for classic European patents (“bundle patents”) by filing a so-called “opt-out” request. An opt-out request can be filed at any time as long as no proceedings are pending before the UPC.
An opt-out can only be filed by the authorised proprietor of the European patent, even if he is not yet entered in the register as the patent proprietor. It is therefore advisable to check that the register entries of your own existing European patents are up to date with regard to ownership.
Such an “opt-out” is not possible for the unitary patent.
Outlook:
The following 7 other countries have also signed the treaty on which the unitary patent system is based: Cyprus, the Czech Republic, Greece, Hungary, Ireland, Poland and Slovakia. However, it is not yet clear when these countries will join. In any case, there will be no extension of protection of existing Unitary Patents to the acceding countries upon accession (unlike the EU trade mark, for example).
Conclusion:
The Unitary Patent offers an additional option and is particularly interesting for patent proprietors who require patent protection in many of the participating states. However, it should be noted that the unitary effect is also associated with the possibility of a centralised nullity attack.
We will be happy to advise you in detail on the IP strategy that suits you best.