The European Unitary Patent (Unitary Patent) is a property right available from 1 June 2023 for 17 participating member states of the EU (Austria, Belgium, Bulgaria, Denmark, Germany, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden).
Currently, the following 8 states are still working on ratification of the UPU Convention: Cyprus, Czech Republic, Greece, Hungary, Ireland, Poland, Romania and Slovakia. Thus, the territorial scope of the unitary patent will grow up to 25 states in the following years. However, the scope of a particular generation of unitary patents will remain unchanged throughout their term, even if further ratifications of the UPC Agreement take place after the unitary effect has been registered.
While a European patent, after its examination and grant by the European Patent Office (EPO), breaks down into national patents of currently up to 39 states as well as 6 extension/validation states, which also administer these patents individually, the unitary patent remains as a singular property right and is administered by the EPO as the central office.
How is a unitary patent obtained?
The unitary patent results from the grant of a European patent. After the decision to grant by the EPO, unitary effect can be applied for in the 17 participating states. For states which do not participate in the unitary patent, the known validation/extension, and thus the conversion of the European patent into a national property right, can take place.
What are the costs of the unitary patent?
The costs of the unitary patent, both in terms of application fees and renewal fees, are approximately the same as those incurred for a patent application 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 that is validated and maintained nationally in four or more member states. Furthermore, translation costs are incurred for a full translation of the patent application into English, if the language of proceedings before the EPO was German or French, or into another official language of an EU member state, if the language of proceedings was English. In addition, there is still the obligation to file 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 all 17 participating states in a single examination procedure. Separate renewal fees do not have to be paid in each participating state to maintain the patent; instead, a central fee is paid to the EPO. Since there is no disintegration into individual national patents after the patent has been granted, an infringement can be prosecuted centrally before the Unified Patent Court (UPC) in all participating states.
What are the disadvantages of the unitary patent?
Since the unitary patent remains a singular property right, opposition and nullity proceedings are also conducted centrally before the UPC. This means that a negative decision (e.g. declaration of invalidity of the patent) also has an effect in all participating states, i.e. the IP right can not only be enforced centrally, but also attacked centrally and possibly destroyed.
Does the start of the European Unitary Patent affect existing European patents?
Legal disputes concerning the Unitary Patent will be decided by the Unitary Patent Court (UPC), which is currently being established. In future, this court will also decide on disputes concerning European patents. This relativises an advantage of the existing European patent system for patent owners. This advantage is that an existing European patent must be challenged nationally in each individual validation/extension state, which is a considerable obstacle. This transfer of jurisdiction for patent disputes to the UPC can be prevented 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 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 one’s own existing European patents to see whether the registers are up to date with regard to ownership.
We will be happy to advise you in detail on the IP strategy that suits you best.