Unitary Patent Q&A
- What is a Unitary Patent?
A Unitary Patent, also known as a European patent with unitary effect, will cover many EU Member States (at least 13), and will include the major patent jurisdictions of the UK, Germany, France, Italy, and the Netherlands.
- How do I get a Unitary Patent?
Unitary Patents will be granted by the European Patent Office (EPO) and can be derived from any European patent applications which designate all the countries involved in the Unitary Patent scheme that are pending before the EPO when the Unitary Patent comes into effect. In practice this will be almost all patent applications pending before the EPO with a filing date on or after 1 March 2007, which was the date when Malta acceded to the European Patent Convention.
Unitary Patent applications will be examined in the ordinary way by the EPO. When the EPO agrees that an application is in order for grant, the EPO will give applicants the option of obtaining either a bundle of individual national patents for all designated states, or a Unitary Patent that covers the participating Member States, with individual national patents for the non-participating states (such as Poland, Spain, and the non-EU EPC member states such as Switzerland and Turkey).
To obtain a Unitary Patent, an applicant must confirm that it wants a Unitary Patent rather than national patents in respect of the participating Member States, and must file a translation of the patent with the EPO. This translation will need to be in English if the European patent application was not in English, or any other language of the European Union if the European patent application was prosecuted in English. The translation will have to be filed with the EPO within 1 month from the date of grant.
- Why would I want one?
A Unitary Patent will be a single right which extends to all participating Member States. The formalities for obtaining a Unitary Patent will be significantly less onerous than the formalities for obtaining equivalent protection via a bundle of national patents. As discussed above, only a single translation of the patent into English if the patent was not prosecuted in English, or otherwise any other language of the European Union, needs to be filed.
The renewal fees to maintain a Unitary Patent will be substantially cheaper, at the level equivalent to maintaining bundle patents in four of the major EU patenting Member States.
See our article here for more detail about who would benefit from a Unitary Patent.
- When will the first Unitary Patent be issued?
- What happens if any of the member states fail to ratify the Unified Patent Court Agreement?
As Unitary Patents can be granted four months after Unified Patent Court Agreement has been ratified by at least 13 Member States (which must include the UK, Germany and France), it is possible that the Court Agreement and the Unitary Patent may come into effect before the ratification process has been completed by all the participating Member States. If this happens, the scope of each Unitary Patent will be limited to those countries which had completed ratification at the date when the Unitary Patent is granted.
- How much will it cost?
The cost of the prosecuting a Unitary Patent through to grant will be exactly the same as the costs for any other European patent application as the new agreement does not make any changes to the prosecution process.
Upon grant, however, translation costs will be much reduced as a Unitary Patent will only have to be translated into one other language, typically costing in the region of €2,400 for a patent application of average length. Many patentees wanting a Unitary Patent will also want covering in Spain. To get a Spanish patent requires a full translation of the patent into Spanish. The extra translation required for a Unitary Patent can be into Spanish (if the patent was originally prosecuted in English), which may have been a necessary cost for the patentee in any case.
The renewal fees will be equivalent to the renewal fees for bundle patents in four Member States, which will mean a substantial saving to patentees since at least 13 (and likely more) Member States will be covered. See our article on this here.
As with existing patent renewal fees, renewal fees for Unitary Patents will rise from a few hundred euros a year in the early years of a patent’s life, to a few thousand in the final year.
- How can I enforce a Unitary Patent?
- What do I need to be thinking about now?
Many currently pending patent applications will be eligible for Unitary Patent protection upon grant. Proprietors will have to weigh up the benefits of obtaining a Unitary Patent, such as broader coverage at significantly less expense than is required under the current system, against possible disadvantages, such as the inability to opt-out of the jurisdiction of the untested new Court and the fact that Unitary Patents will be subject to central attack.
It will also be important to weigh up the hidden costs in portfolio management, such as the benefits of having to manage a single renewal fee and deal with a single patent register rather than multiple national patent fees and patent registers as is currently the case. Equally, however, the unitary nature of the new right may on occasion be a disadvantage - for example, it will only be possible to maintain or abandon the entire right rather than merely dropping one or two of the less important jurisdictions as is possible under the current system.
If obtaining a Unitary Patent is particularly attractive for specific inventions, then it may be possible to slow down prosecution of certain cases before the EPO to delay grant until Unitary Patents are available, provided, of course, that such an approach does not have other adverse consequences.
Unitary Patents with coverage across at least 13 EU Member States will be highly valuable assets and innovative companies should therefore be reviewing the costs involved with their current portfolios, their pending patent applications and also performing a realistic strategic appraisal of how they use their patents to establish how they can take maximum commercial advantage of the new Unitary Patent when it comes into force.
This document (and any information accessed through links in this document) is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.