Withers & Rogers - Unitary Patent Explained
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The “European Patent with unitary effect”, or “Unitary Patent” for short, is a single patent which would cover all participating Member States of the European Union. Unitary Patents would be obtained using the existing European patent application procedure and would be enforceable throughout the participating Member States in a single action brought before the new Unified Patents Court.

Jurisdictions covered by the Unitary Patent

The majority of EU Member States agreed to adopt the new system. However, Spain declared that they are not taking part, Poland has not signed required legislation, and the UK has left the EU and declared that it is no longer seeking to be a part of the system. 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 would 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, Norway and the UK would currently not be covered by the Unitary Patent. However, it would be possible to obtain a Unitary Patent and also validate in those non-EU and any other non-participating countries.

Date of implementation

The relevant legislation needs to be ratified by thirteen Member States of the European Union, including 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. The committee’s latest statements can be found here.

The UK and the Unitary Patent

It is the current UK government position that the UK will not seek to be a  member of the UP. Consequently UPs will not cover the UK.

British companies and inventors will still be able to use the UPC if and when it comes into operation.  Rights of representation before the European Patent Office (EPO) are based on membership of the European Patent Convention (which includes non-EU members such as Turkey and Norway) and are entirely independent of membership of the EU. Any authorised representative before the EPO will be obtain to obtain registration of a UP via the EPO regardless of whether the representative is resident inside or outside the EU. Consequently all of Withers & Rogers’ European Patent Attorneys would be able to obtain Unitary Patents regardless of their nationality or whether they are based in the UK, France and Germany, just as they are able to obtain conventional European Patents.

The application procedure

Unitary Patents would be obtained from the European Patent Office (EPO) using the existing patent application procedure.

On grant, applicants would have three main options to choose from:

  • Validate the European Patent in the usual manner, choosing individual countries where protection is desired (i.e. no unitary protection);
  • Elect to have a Unitary Patent, covering the participating EU Member States (i.e. no individual validations); or
  • Elect to have a Unitary Patent, together with validations (or extensions) for countries which are not participating in the new system or which have the yet ratified the UPP legislation.

Cost of obtaining and renewing a Unitary Patent

In order to request a Unitary Patent the standard central EPO fees for publication, grant, printing and translation would 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 would be used to obtain Unitary Patents, filing and prosecution costs would remain the same. The main differences in cost at the grant stage would 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 would be equivalent to the sum total of the renewal fees for the four most validated countries.

True Top 4 Model

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.

Translations

For patent prosecution, the language regime would 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 would produce highly accurate machine translations. However, there are transitional provisions which would require human translations, which may last as long as twelve years, depending on the progress of the machine translations.

The transitional translation provisions would 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 would be cheaper if the application has been prosecuted in English.

Conclusions

If the Unitary Patent is introduced, there would be three primary routes for obtaining patent protection in Europe and two routes for litigation. Accordingly, European filing strategies would become more complex.

There are a number of decisions that applicants would 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 would 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.