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It is important to note that a granted UP will only cover those
EU member states that were part of the UP system at the
time of selecting the UP option. Coverage for the other EU
member states will be available via the traditional national
validation route.
What are the cost implications?
As the process of applying for and obtaining a European
patent will remain the same, the costs involved in that
process will not change. The difference in cost is at the post-
grant stage, when the European patent must be validated
at the national patent offices of the countries in which
patent protection is required. For a traditional European
patent this process typically involves filing translations of all
or part of the granted patent into an accepted language at
each of the relevant national patent offices. For a validation
programme covering several states translation costs can
mount up quickly. In contrast, electing the UP requires only
a single translation of the granted patent into either English
(if the language of the patent is either French or German) or
into any EU official language (if the language of the patent is
English). Accordingly, the post-grant validation costs for a UP
will be significantly less than the costs involved in obtaining
equivalent protection via the traditional route.
Annual renewal costs may also be significantly reduced, as
the post-grant official renewal fees for a Unitary Patent will
be equivalent to the cost of renewing a patent in the UK,
France, Germany and the Netherlands.
So, if you currently validate your European patents in four
or more EU countries, you’ll likely see a reduction in renewal
costs if you take up the UP option. On the other hand, if you
currently validate your European patents in three countries
or fewer, renewal costs will likely increase.
What are the benefits?
The main benefit of the UP is that it is a single patent right
covering all of the available UP member states. The UPC will
enable patent holders to enforce their rights in all of these
states with a single legal action (which can be in the language
of the patent), meaning that it will no longer be necessary to
bring legal action in each country separately.
It will also simplify administration with a single renewal fee
and a single patent office (the EPO) at which to lodge any
assignments, name changes etc.
Are there any disadvantages?
The unitary nature of the UP is also its main disadvantage,
as a UP will be treated as a single asset for all purposes. This
means that if the validity of a UP is successfully challenged at
the UPC, the patent will be revoked (cancelled) in its entirety,
leaving no rights in any of the countries that it covered.
Accordingly, applicants should carefully consider whether it
is appropriate for key technologies to be covered by UPs, or
whether the traditional European patent route resulting in
grant of a bundle of national patents is safer.
Additionally, it will not be possible to cherry-pick the
countries in which protection is to be maintained after
grant by failing to pay renewal fees in the countries where
...It’s finally happening!
IP review
spring 2017
