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The “European Patent with unitary effect”, or “Unitary Patent” for short, is a single patent which will cover all participating member states of the European Union. Unitary Patents will be obtained using the existing European patent application procedure and will be enforceable throughout the participating member states in a single action brought before the new Unified Patent Court.
The Unified Patent Court (UPC) is a single court system in which patent matters will be heard for all participating member states. The UPC will have exclusive jurisdiction over Unitary Patents and, ultimately, over traditional European patents in participating countries.
The Unitary Patent and Unified Patent Court regime will take effect in full on the first day of the fourth month following the deposit by Germany of its instrument of ratification of the UPC Agreement. This is expected to be in late 2022.
Once Germany has ratified the UPC Agreement, first requests for unitary effect may be made, and European patents may be opted out of the Unified Patent Court jurisdiction under transitional arrangements (until the system enters into force).
As things stand, the first UPs will likely be registered by early 2023 and cover at least the following 17 countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania and Slovakia are expected to join soon.
Poland and Spain will not be part of the Unitary Patent system for the time being, and Croatia was not an EU member state at the time the UP regulation was signed.
The intention is to build a long-standing framework for Europe. Withdrawal, whilst technically possible, is not being actively discussed.
You still have the choice between filing national applications through the national offices, classic European patent validations which are brought into force on a country-by-country basis and the Unitary Patent as a single right covering all participating member states.
The UK’s ratification of the UPC Agreement was withdrawn following Brexit, meaning that the Unitary Patent will not cover the UK. The new location for the branch of the Central Division, which was originally going to be located in London, is yet to be decided.
W&R are a European firm and can fully represent you in all UP and UPC matters, as well as possible parallel UK proceedings.
The departure of the UK from the EU does not impact the ability of our UK, French and German attorneys to obtain European patents, obtain Unitary Patents or to litigate in the UPC.
It is theoretically possible that the UK could join, and there is no specific prohibition on this happening, but it is unlikely for the time being.
As with traditional validations, the Unitary Patent costs include attorney service charges, costs for translating the granted patent at the time of filing the request for unitary effect and annuities.
Unitary Patent annuities have been set at a level equivalent to the combined renewal fees of the top four countries among the participating member states at the time the fee level was adopted (at that time the UK, France, Germany and the Netherlands). The total fees for the first ten years amount to less than €5,000.
The Unitary Patent translation cost should be compared with classic validation costs, often requiring additional service and translation costs, depending on your targeted jurisdictions.
Factoring in the above costs, if you intend to target 4 or more jurisdictions, among the 17 initial member states, then the Unitary Patent will be less expensive than regular validations.
The rule of thumb for 4 jurisdictions applies to jurisdictions within the system. UK, Spain, Turkey or Norway, for example, should be considered separately and will incur the same costs regardless of whether you seek unitary effect or national validations for the UP member states.
Since 2009, European patent designations are covered via a single designation fee due within 6 months of the publication of the search report. The Unitary Patent introduction is a post-grant procedure and has no effect on this rule: no additional designation fee or administrative fee is required at the time of filing the request for unitary effect.
Initially, and for at least 6 years, applicants will be required to file the following translation with their request for unitary effect:
The aim is to eventually meet the translation requirements using machine translations generated by the EPO.
The translation for the Unitary Patent must be submitted at the EPO within one month following the decision to grant, together with the request for unitary effect.
Although this is a short deadline, keep in mind that the decision to grant comes after the applicant has approved the text intended to grant (following a R71(3) EPC communication). If we receive your instructions regarding unitary effect at this time, there should be sufficient time to prepare the translation.
If the patent is granted in English, any EU language would be accepted. This can provide opportunities to streamline costs by making use of existing translations of the patent. For instance, if a Spanish language translation must be prepared for use in a separate Spanish validation this could also be used to fulfil this requirement, or if a Spanish language version of the application exists because there is, for instance, a corresponding Mexican application, that could also be updated and used as the Unitary Patent translation.
Automatic translations have been explicitly excluded in the recitals of the Regulation 1260/2012 (translation arrangements).
However, translations will not be checked by the EPO and so, in effect, an automatic translation would be accepted by the EPO.
The risk lies in the request for unitary effect using a machine translation in reality being an invalid request, which cannot later be remedied. As such, the filing of a machine translation carries the risk that the Unitary Patent would later be found to have no legal effect.
The only remedy for not meeting the one-month deadline is a restitutio in integrum i.e., a painful restoration process, which cannot be guaranteed as we would need to show that the deadline was missed through error despite all due care being taken to meet the deadline.
However, it is important to bear in mind that the time from approving the text to the grant of the patent takes approximately 6 weeks, and the sunrise period is just over 3 months – so the additional decision making time is minimal.
Opt-out is performed at the UPC registry, and the aim is to be able to opt-out large numbers of patents easily and efficiently, via a dedicated web service (although systems are yet to be put in place and it’s likely to be less simple than it sounds!).
The EPO handles UP related tasks at the end of the European patent grant procedure. The UPC handles opt-out requests.
For further information please speak to your usual contact at Withers & Rogers or email Russell Barton:
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.