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The Unitary Patent

No change to filing or prosecution at the EPO

It is important to mention first of all that there is no change to the application procedure at the European Patent Office. You will file an application at the EPO in the normal way, or will designate “EP” as usual in a PCT application.

There is no change at the filing stage and the application proceeds through search and examination at the EPO exactly the same as it does now. The new Unitary Patent simply gives an extra option which arises when the patent is granted by the EPO.

The current ‘bundle’

Currently, each European patent granted by the EPO must be validated in each of the member countries. This gives a ‘bundle’ of national patent rights which are then dealt with separately under the national laws of each country. Commentators often refer to these validations as ‘classical validations’.

The new ‘European Patent with Unitary Effect’

The aim of the new Unitary Patent is to give a single patent with unitary effect across the entire European Union – that is, a true “European patent”. In practice there have been some compromises, but the new system brings us a little closer to realising the goal.

Geographical Coverage

The new UP will only cover some of the many countries in Europe. The exact list is still being decided.

Currently, a granted European patent can be validated in any desired combination of the thirty-eight (38) member states of the European Patent Convention. The new Unitary Patent will cover only a subset of the 38 EPC states, and applies only to EU countries that have signed up to the UPC Agreement. The system must have a minimum of 13 states, which must include United Kingdom, France and Germany, in order to begin. Currently 25 member states intend to ratify, which would be all EPC states except: Spain, Switzerland; Norway; Poland; Turkey; Albania; Croatia; Iceland; Liechtenstein; Monaco; Macedonia; Serbia; and San Marino.

The EU Patent package will enter into force in ratified countries four months after:

  • The deposit of the thirteenth instrument of ratification, including DE, UK and FR (as the three Contracting Member States in which the highest number of European patents had effect in 2012). Twelve (including France) have already ratified (May 17) – (see status of ratification).

There is still uncertainty as to if and when the UK and Germany will ratify the agreement, the EU patent package will enter force and which countries it will cover. However, our best guess would be sometime between 2018 and 2020.

The new ‘UP’ option

The new Unitary Patent gives an additional option upon grant of the patent by the EPO, which will exist alongside the traditional, classical validation option:

  • Some countries stay exactly as they are now
  • Some countries will have Unitary Patents as an additional option.

Just like we do at present, when the patent is granted by the EPO we have to think about which countries to keep alive and which to drop. Let’s first consider the non-EU countries such as Norway and Turkey where there is no change and, just like now, if you want those countries then you go through the national validation procedures with local translations etc.

Secondly we have the UPC countries when you have a choice – either pick and choose using the classical validation route separately in each country, or to use the new Unitary Patent to cover the whole UPC area at once. However, if the UK is an important territory. applicants should be cautious about a unitary patent validation before the impact of Brexit and the UK’s continued participation is confirmed.

Is the Unitary Patent going to be good value?

Territory vs Cost

The principle question concerns geographical coverage versus costs. The Unitary Patent, we expect, will cover 13+ countries for a reasonable cost, but that cost is fixed and applies the same for all patents. By contrast the traditional system allows you to choose a mix of countries that are appropriate to this particular patent and gives lifetime flexibility, in that over the lifetime of the patent some countries can be dropped whilst others are kept alive. Typically, as the patent ages then you will review the countries covered and remove those which are no longer of interest.

It is not yet possible to do a fully detailed cost comparison of the classical route against the new UP option, but initial calculations indicate that the break-even point for the UP will be equivalent to around four national validations. That is, if you were intending to validate the patent in United Kingdom, France, Germany and Netherlands then the costs are going to be roughly equivalent to using the UP route. The UP route then gives 13+ countries for pretty much the same cost – assuming that you are happy with the loss of flexibility and the inability to remove any countries or reduce costs later on.

Court Jurisdiction

The second issue, and this is again an important one, is that Unitary Patents will by default fall under the jurisdiction of the new Unified Patent Court. Here, you need to consider whether you want your patent to be litigated for infringement and for validity in the new UPC, or whether you want to retain instead the option of going to the traditional National Patent Courts separately in each state, which we will discuss on the next page.

Assessing Unitary Patent Value

When deciding whether the Unitary Patent is a good option, we will need to consider:

  • which EPC countries and for how long protection is needed. Then compare validation and renewal costs for UP v Classic validations, bearing in mind the increased geographical coverage.
  • what level of flexibility is needed. With classically validated patents, you can drop states as the product / market matures. The UP doesn’t have this flexibility as it is a single renewal fee.
  • whether the patent needs to avoid UPC jurisdiction over infringement and revocation. UPC jurisdiction cannot be avoided with a UP. But it is possible to avoid UPC jurisdiction during a transitional period by classically validating with an opt-out.

Requesting Unitary Patent and Renewals

Based on the draft Rules (to be confirmed), a European patent obtains a unitary effect (UP validation) by filing a request. The request for UP must be made within 1-month of grant. No official fees are paid, but a full translation will be needed. If UP is allowed, you get a UP registration. The register will show the registration date and ratified states in which UP has effect. If UP is not requested or refused, the patent will proceed on the classical route as now with validation procedures due in individual states within 3-months.

The UP renewal provisions correspond to the provisions for pre-grant renewals at the EPO. UP renewals will therefore be payable up to 3-months early, at least 3-months from registration of UP, end-of-month payment, notification of missed payment, 6-month grace with extra fee, notification of loss-of-rights, and re-establishment.

Paul MisselbrookPartner

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