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.
Key Features of the Unitary Patent (UP)
The Unitary patent (UP) will, for the first time, offer patent proprietors the option to have a single patent covering multiple EU member states.
Some key features of the UP are:
The Unitary patent (UP) will, for the first time, offer patent proprietors the option to have a single patent covering multiple EU member states.
Some key features of the UP are:
- It is unitary and must have the same claims for each UP member state
- Limitation, transfer, revocation or lapse occurs for all UP member states
- There is a single renewal fee payable to the EPO
- The Unified Patent Court (UPC) is the sole jurisdiction for infringement, revocation and similar actions for a UP
- At the time of writing, the UP member states are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden (likely to be more in the future)
Requirements and timing of a UP request
A request for a UP must be filed within one month of the date of grant of an EP patent. There will not be an associated official fee.
During a transition period, the patent proprietor will be required to file an appropriate translation. For example if the patent is in English, a translation into any other EU language will be required.
For currently pending EP patent applications where a UP is desired upon grant, there are ways to delay grant in order to keep the option of a UP open. See our article for more information.
Factors which may influence the decision to request a UP
There are various factors to consider when deciding whether to request a UP and different decisions may be appropriate for different patents in your portfolio. Some indicative questions are:
- Would you like wide country coverage (i.e. more than 4 of the UP member states)?
- If you typically pursue protection in only 2 of the UP member states, are there commercial benefits in paying extra to obtain the full country coverage?
- Do you typically pay renewal fees in all states during the life of the patent?
- Is it unlikely that you would want to transfer the patent in individual UP member states?
- Are you comfortable with any risk associated with jurisdiction under the UPC, including the possibility of central revocation of your patent by a third party?
If most of your answers are yes, then requesting UP may be the best option. However, please discuss your portfolio with us before making a final decision.
Frequently Asked Questions for the Unitary Patent (UP) – Appleyard Lees
