The Unitary Patent

The UP system enables patentees to obtain (through a single patent application) a single, indivisible patent right granting uniform protection in all of the contracting EU member states that have ratified the UPCA. UPs therefore allow patent proprietors to obtain injunctions with effect in the territories of all participating member states and awards of pan-European damages. However, such patents are also at risk of being revoked in one centralised action with the same pan-European effect.

UPs are not an entirely new type of patent—in order to register a UP, an applicant must first apply to obtain an EP in the usual way i.e., through an application to the European Patent Office (EPO). The system is a tried and tested method of obtaining patent protection, meaning that the initial stage of obtaining UP protection should feel familiar. The requirements for the application, examination and granting of UPs are governed by the EPC and the EPO is the body that is responsible for examining and granting such patent applications as well as handling opposition proceedings.

UP protection is only available for EPs that are granted after the date the UPCA entered into force (1 June 2023). Once an EP has been granted, the process of obtaining a UP is started by the proprietor filing a ‘request for unitary effect’ at the EPO (rather than opting to validate the patent on a country-by-country basis as is the process under the pre-existing EP regime). The request for unitary effect must be filed within one month of the date of publication of the mention of the grant of the EP in the European Patent Bulletin. To be eligible for registration as a UP, the EP must have been granted with the same set of claims in respect of all the participating member states.

If the applicant misses the one-month period for filing a request for unitary effect, the applicant can request a re-establishment of rights. The request for re-establishment must be filed within two months of expiry of the one-month period, along with a fee. The request for unitary effect must also be filed in the same two-month period.

Language regime

In general, where the specification of an EP with unitary effect i.e., a UP has been published in one of the official languages of the EPO (English, French and German) no further translations will be required. However, for an initial transition period of six years (which may be extended but cannot exceed a total of 12 years), the request for unitary effect following the publication of the mention of grant of the EP must be accompanied by a translation of the patent specification into either English (if the language of the proceedings is French or German) or into an official EU language (if the language of the proceedings is English). Certain applicants may be compensated for their translation costs.

Costs

The process of registering a UP does not involve any official fee and so the cost of registering a UP is low relative to the cost of validating an EP in a significant number of the participating member states.

UPs are subject to the payment of a single renewal fee to the EPO, which corresponds roughly to the sum of the renewal fees currently paid in the four countries where EPs are most commonly validated. As such, the UP renewal fees are likely to be attractive for patentees who would otherwise seek to validate their EP in a large number of member states (although the cost saving of a UP may be less pronounced if the owner of an EP would likely choose to only maintain the patent in some countries over the life of the patent and thereby reduce their renewal costs over time as this option is not available in relation to UPs). It is also important to note that patentees who wish to obtain protection in the UK also need to factor in the costs of validating an EP in the UK and/or applying for a national GB patent.

The official fees for renewing a UP start off at a conspicuously low level in the early years of the patent’s life, then increases substantially in later years.

Transitional measures

Two transitional measures were introduced by the EPO to encourage and support early uptake of the UP system. These measures were made available by the EPO from 1 January 2023 to 31 May 2023 and applied to EP applications that had reached the final stage of the grant procedure i.e., for which a communication under Rule 71(3) EPC (Notification of Intention to Grant) had been issued during this period.

The first measure enabled applicants to file early requests for unitary effect so that the EPO could register unitary effect immediately / as soon as possible once the UP system went live on 1 June 2023. So long as an applicant who filed an early request for unitary effect had fulfilled the requirements under Rule 71(3) EPC (to pay the fee for grant and publication and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings within four months) and met the formal requirements for the registration of unitary effect by the time the UP system went live, their patent will be registered as a UP from the date of mention of grant (assuming this is after the UP system came into effect).

The second measure made it possible for applicants to request a delay in the issue of a decision to grant an EP in order to ensure that the publication of the mention of grant in the European Patent Bulletin happened on a date on or immediately after the start of the UP system so that the patent could be eligible for UP protection. This measure did not, on its own, result in a UP. In order to get a UP, an applicant must have either made an early request for unitary effect before the start of the UP system, or must make a request for unitary effect within one month of publication of the mention of grant of the EP in the European Patent Bulletin.