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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 Patents Court.
The majority of EU Member States (including the UK which is now no longer a member of the EU) agreed to adopt the new system. However, Spain declared that they are not taking part and Poland has not signed required legislation. The time it takes for countries to ratify the legislation may vary so the actual coverage of new Unitary Patents is likely to change over time. An important point to note is that it will not be possible to obtain unitary protection and also validate in individual participating EU Member States from the same patent.
Those countries that are currently covered by the European Patent Convention (EPC) but are not in the EU, such as Switzerland and Norway, will not be covered by the Unitary Patent. However, it will be possible to obtain a Unitary Patent and also validate in those non-EU and any other non-participating countries.
The relevant legislation needs to be ratified by thirteen Member States of the European Union, including the UK, France and Germany, before the new system can be rolled out. The official committee had expected the system to ‘go live’ in December 2017 but complications in a number of countries led them to postpone this. One of those complications has yet to be resolved. The committee’s latest statement can be found here.
Please click here for updates and the latest Unitary Patent news.
Up until the 31st December 2020 all relevant EU Law applies in the UK, and consequently if any Unitary Patent is granted before that then it would cover the UK until at least that date. This period of time is known as the “UK’s Transition Period”. It is only on the 1st January 2021 after the UK’s Transition Period ends that the UK will be no longer bound by the EU and the Laws of the EU and that the Unitary Patent Regulation in its current form would cease to apply in the UK.
The UK’s future relationship with the EU is not yet known. Neither is it known whether a mechanism might be found to keep the UK as part of the Unitary Patent. As 2020 progresses we will have a better idea of the political mechanisms by which the UK might remain a member of the Unitary Patent.
It is possible that even if the UK remains a member of the Unified Patent Court after the end of the UK’s Transition Period (https://www.withersrogers.com/knowledge-bank/unitary-patent-package/introduction-unitary-patent/) that it still ceases to be covered by the Unitary Patent. In such a circumstance we would expect the UK government would implement similar provisions for the Unitary Patent as it already has done for EU Trade Marks and EU Designs to ensure there is no loss of rights in the UK for the Patent holder (information on this process can be found here). Such equivalent Trade Mark and Design rights prevents loss of rights for Trade Mark and Design holders.
Unitary Patents will be obtained from the European Patent Office (EPO) using the existing patent application procedure.
On grant, applicants will have three main options to choose from:
In order to request a Unitary Patent the standard central EPO fees for publication, grant, printing and translation will be required. A big area of saving for the UP is the removal of the requirements for national validations, country by country, of the granted patent. Renewal fees have been set at a ‘True Top 4’ approach, which could lead to significant savings for applicants seeking Europe-wide protection. However, for those looking to file only in one or two countries, traditional European Patents or national filings may be the cheaper option.
As traditional European patent applications will be used to obtain Unitary Patents, filing and prosecution costs will remain the same. The main differences in cost at the grant stage will be as a result of translation costs, for which the full specification must be translated into only one other language, and that the requirements for local addresses for service/national validation which exist in many member states do not apply.
The renewal fees for the Unitary Patent have been set at a ‘True Top 4’ level, meaning that they will be equivalent to the sum total of the renewal fees for the four most validated countries (France, Germany, UK and the Netherlands).
In light of the True Top 4 model, European Patents validated in more than four countries are likely to be more expensive to renew and European Patents validated in fewer than four countries are likely to be cheaper.
For patent prosecution, the language regime will be exactly the same as the current system used by the EPO. Applications may be prosecuted in any of the official languages of the EPO: English, German and French. On grant, the process changes for Unitary Patents.
Ultimately the aim is that when an applicant elects to obtain a Unitary Patent after grant, the EPO will produce highly accurate machine translations. However, there are transitional provisions which will require human translations, which may last as long as twelve years, depending on the progress of the machine translations.
The transitional provisions will require the entire patent specification to be translated into one other EU language, if the patent application was prosecuted in English. There is the option for such applicants to choose one of the cheapest languages in which to obtain a translation. If the application was prosecuted in French or German, the entire specification must be translated into English. Accordingly, applicants may find that post grant translation costs will be cheaper if the application has been prosecuted in English.
When the Unitary Patent is introduced, there will be three primary routes for obtaining patent protection in Europe and two routes for litigation. Accordingly, European filing strategies will become more complex.
There are a number of decisions that applicants will need to begin considering. For example, do I register for a Unitary Patent or opt for national validations? Should I begin considering direct national filings rather than using the European Patent office? Should I opt out of the new Court system with my existing European Patents?
The new system will almost certainly offer cheaper pan-European patent protection. However, those applicants requiring reduced geographic coverage may find that traditional European patents are likely to offer a more affordable route.
We recommend that you contact your usual Withers & Rogers attorney, who can begin helping you plan for these important developments.