Frequently asked questions about the Unitary Patent (UP)

A Unitary Patent (UP) is a single patent that covers all those EU Member States that have agreed to participate in the UPC system (referred to as “UPC Member States”).

The UP is a single uniform patent that provides protection in all UPC Member States. This is in contrast to a granted European patent that is separately nationally validated in one or more EPC member states (and often referred to as a ‘bundle of national rights’).

A UP remains in force through annual payment of a single renewal fee. Unlike traditionally validated European patents, it is not possible to allow protection in some UPC Member States to lapse with a UP: either the UP is in force in all UPC Member States or none of them.

The UP may alternatively be referred to as a European patent with unitary effect.

A UPC Member State is a state that has both signed and ratified the UPC Agreement (UPCA). It is necessary to be an EU Member State to be a UPC Member State. The 18 current UPC Member States are:

Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia and Sweden.

The grant of European patents is governed by the European Patent Office (EPO) in accordance with the European Patent Convention (EPC). There are 39 contracting states to the EPC. Of these 39 states, 27 are also EU Member States and 12 are non-EU Member States. There are therefore 21 EPC contracting states that are not UPC Member States and, of those 21 states, 9 are EU Member States and 12 are non-EU Member States.

The following EPC states are not UPC Member States:

Albania, Croatia, Cyprus, Czech Republic, Greece, Hungary, Iceland, Ireland, Liechtenstein, Monaco, Montenegro, North Macedonia, Norway, Poland, San Marino, Serbia, Slovakia, Spain, Switzerland, Turkey and the UK.

Of these, six are EU Member States that have signed, but not ratified, the UPC Agreement, and may decide to participate later. These are sometimes referred to as UPCA Signatory States.  These are:

Cyprus, Czech Republic, Greece, Hungary, Ireland and Slovakia.

Three EU Member States, Croatia, Spain and Poland, do not intend to participate in the UPC and have neither signed nor ratified the UPC Agreement.

The 12 non-EU states that are contracting states of the EPC cannot participate in the UPC. These are:

Iceland, Norway, Turkey, Switzerland, Liechtenstein, San Marino, Monaco, Serbia, Albania, North Macedonia, Montenegro and the UK.

The introduction of the UPC system makes no change to the filing and prosecution of European patent applications. All applications for a European patent therefore start with a single European patent application at the European Patent Office (EPO), which grants as a European patent.

After grant, patent owners have a choice: (1) they can choose where in Europe protection is required from among the 39 contracting EPC states and nationally validate the patent in those states; and/or (2) they can file a request for unitary effect (i.e. request a UP).

Patent owners can use a combination of national validations and the UP. This will be necessary if, in addition to a UP, protection is sought in one or more non-UPC Member States.

A request for a UP must be filed within one month of grant (compared to the deadline of three months from grant for most national validations). The request is made by filing the necessary form at the EPO, and must be filed by or on behalf of the patent proprietor(s). If the one-month deadline is missed, there is an opportunity to request re-establishment of rights within two months of expiry of the one month period.

During a transitional period of six years from the introduction of the UPC in June 2023 (which may be extended up to a maximum of twelve years), it is necessary to file a translation of the European patent with the request for a UP. If the patent is in English, then it is necessary to file a translation into any other official language of the EU. This includes EU countries that are not UPC Member States, providing a degree of flexibility that might allow you to re-use a translation already obtained for a national validation (e.g. Spanish). We can advise on the best translation to file on a case by case basis and can obtain any necessary translations for you.

The translation is for information purposes only and will not have any legal effect. It is currently advised not to file a machine translation, but this may change in future.

No, it is still possible to request separate national validations of European patents in one or more of the EPC contracting states. Thus, there are two routes to obtaining protection in EPC states:

1)  The “classical” national validation route which involves separately requesting validation in one or more of the 39 contracting states.

2)  The UP route which involves a single request to cover all UPC Member States (potentially combined with national validations in any of the other EPC states).

The option to file national patent applications in EPC member states also remains.

Yes. Even if a UP is requested, national validations will be required if protection is sought for those states that are not UPC Member States. For example, you may wish to request both a UP (to cover the UPC Member States) and to validate nationally in the UK (or other states that are not UPC Member States). However, it will not be possible to request both a UP and a national validation in a UPC Member State; i.e. a UPC Member State can be covered by a national validation or a UP, but not both.

Renewal fees for a UP are paid to the EPO annually after grant. A single renewal fee is payable for a UP. It is not possible to reduce this fee, for example by abandoning protection in one or more of the UPC member States. Once you have requested a UP then you must either maintain or abandon the UP in all UPC Member States. This is because the UP is a single, uniform patent right, whose territorial protection cannot be divided out or reduced.

The rules for paying a renewal fee on a UP are the same as those for a European patent application. The fee can be paid from three months before the renewal fee due date, and there is a six-month grace period for paying an overdue renewal fee. If you decide to request a UP, then your renewal fee provider will monitor the payment date for you in the usual manner.

The renewal fee for a UP is based on the aggregate cost of renewal fees for the top four UPC Member States – Germany, France, Italy and the Netherlands. The renewal fee costs for a UP are significantly cheaper than renewing separately in all UPC Member States. However, if you typically only validate and renew in two or three EPC member states then the renewal fee costs for a UP will be more expensive.

A link to the official renewal fees for a UP is provided here: https://www.epo.org/en/service-support/faq/law-practice/unitary-patent/costs-unitary-patent-and-reductions-small-2

We can provide example renewal fee costs when you need to make decisions on validations.

Yes. If you amend the claims of your European patent application differently for different EPC contracting states (for example based on national prior art) you may not be able to obtain a UP. Also, if you withdraw a designation then you may not be able to obtain a UP. The situations in which such circumstance could arise are unusual and often complex, so your usual attorney will discuss this with you if necessary.

The EPO maintains a Register for Unitary Patent Protection as an integral but special part of the existing European Patent Register.

The Register for Unitary Patent Protection lists the participating Member States covered by a given UP. It also contains entries relating to transfer, licences, lapse, limitation or revocation of UPs.

Any transfers of UPs should be recorded at the EPO on the Register for Unitary Patent Protection. The recordal of a transfer of a UP follows the same rules as for a European patent application. The central recordal of a transfer at the EPO for a UP is more cost and time efficient than separate recordals at national patent offices, as is required for nationally validated European patents. It is, however, still necessary to record transfers for any additional nationally validated European patents in non-UPC Member States at national patent offices.

Yes. The EPO opposition procedure applies to a European patent for which a UP is requested in the same way as for any other nationally validated European patent.

No. In addition to the EPO opposition procedure, revocation actions against a UP are possible and are handled exclusively by the Unified Patent Court (UPC), rather than by national courts. A decision by the UPC to revoke a UP will apply to all UPC Member States (i.e. by means of a single action).

The UPC has sole jurisdiction to handle actions relating to the infringement (and any subsequent counterclaims for invalidity) of a UP. The UPC also has jurisdiction to handle infringement and invalidity counterclaims for European patents nationally validated in UPC Member States (unless those patents have been opted out). Thus, the UPC offers a centralised procedure for infringement and validity actions, whose decisions take effect in all UPC Member States in which the patent is in force.  Enforcement of patents before the UPC can therefore provide pan-jurisdictional relief (such as injunctions) and can be less costly than taking separate national actions in multiple states, but also runs the risk of revocation of the patent for all UPC Member States if the invalidity counterclaim succeeds. For more information on the UPC see our separate FAQ sheet about the Unified Patent Court.