Unitary Patent

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Unitary Patent

A Unitary patent has been created by a specific EU Regulation which will enter into force together with the Agreement on the Unified Patent Court (probably in 2017).

What is a Unitary Patent?

The Unitary patent is in fact a European patent having a unitary effect in most of the EU Member States.

How to obtain a Unitary Patent?

To obtain a Unitary patent, it will be sufficient to file a European patent application.

The search and examination will proceed as usual by the Examining Divisions of the EPO until grant of a European patent. Pending European patent applications may give rise to a Unitary patent if their date of grant is after entry into force of the Unitary patent Regulation.

Within one month from grant of the patent, the patentee will have the possibility of choosing between:

(i) a European patent having the effects of national patents in several countries designated or (ii) a Unitary patent i.e. a European patent having a unitary effect in the EU Member States having ratified the Agreement on the Unified Patent Court (UPC agreement).

It is also possible to choose a Unitary patent and at the same time a European patent for countries outside of the UPC Agreement. The Unitary patent may not be chosen if the claims of a European patent application are different for certain countries (due to some existing prior national rights).

For more information, please click here.

What does the Unitary patent covers?

The number of European countries covered by the Unitary patent will be at minimum 13 and up to 25, including France, Germany and, in principle, the United Kingdom (in case of an effective Brexit however, this may have to be reconsidered). Spain is presently out of this system and will therefore not be covered by the Unitary patent protection.

What translation is required?

A translation is to be filed of the complete patent (description and claims) in the language of any of the UPC Contracting Member States as long as the patent has been granted in English. For example, the patentee may file a translation in French or in German. (See the specific Regulation on translations).

Is it possible to file an opposition against a Unitary Patent?

Since the Unitary patent is, in fact, a European patent, any third party may file an opposition at the EPO within the usual nine months opposition period. An Opposition Division and subsequently a Board of Appeal may therefore decide to revoke entirely the European patent for all the designated countries including the entire territory of the Unitary patent.

What annual fees must be paid for a Unitary Patent?

A single renewal fee for the Unitary patent will have to be paid at the EPO during the life of the Unitary patent and until its expiry. The level of the renewal fees will correspond approximately to 4 European countries.

For more information on annual fees, please click here.

How can a Unitary Patent be assigned or licensed?

The Unitary patent can only be assigned for the entire territory covered. Licenses limited to certain territories may however be granted.

What to do in case of infringement of a Unitary Patent?

The infringing acts of a Unitary patent are defined in the Agreement on the Unified Patent Court (UPC Agreement). This new Court will have exclusive jurisdiction for all infringement actions relating to a Unitary Patent as well as for determination of damages and revocation actions.

For more information from the Preparatory Committee of the Unified Patent Court, click here.

CONCLUSION

Which patent protection should be chosen in Europe?

There are a number of possible choices, from national patents to European patents with national effects and the Unitary patent.

The decision will depend on each situation. The following points may be taken into consideration:

  • The risk of simultaneous revocations in several countries. This risk exists for the Unitary patent, but also for the European patent designating several Contracting Member States having ratified the UPC Agreement. (Unless an opt out has been registered for a given European patent, in which case infringement and revocation actions must still be filed before National courts).

It must be noted that this risk should be balanced with the advantages of the new centralized patent court system (one single decision on infringement, injunction and damages for a group of countries).

  • The costs must also be taken into consideration. The translation costs for a Unitary patent will be generally lower as compared to a European patent with national effects for the same countries (defending on the countries chosen).
  • The renewal costs will also have to be considered.

An app on iPhone, Androïd and web browsers conceived by CASALONGA allows you already now to simulate and compare annual fees for a European patent, with and without a Unitary Patent.