Requesting a Unitary Patent – What do I need to know?

This resource covers admin aspects of requesting a UP; for a more general discussion regarding the UP, see here.

Practice tips 

• Provide us with instructions pre-grant as early as possible

• Ask your attorney for advice on requesting a UP vs traditional validation in individual countries

• Consider if you want to indicate a place of business in the EU or have German law applied by default

• A translation into Spanish is often the cheapest option

• Check out our advice on renewal fees
   

What’s changed?

Since the changes to the European patent system which led to the introduction of the Unitary Patent (UP) and the Unified Patent Court (UPC), we have been assisting more and more clients with obtaining UPs at the EPO.
 

What do I need to know?

Your usual European patent (EP) attorney at Kilburn & Strode will be happy to assist you with requesting a UP, but we have put together this introductory resource to provide answers to basic questions, in particular for administrators supporting patent attorneys who would like to request UPs.
 

• When should I get instructions for a UP request from my team?

  • Ideally, at the “intention to grant” stage.

  • Your EP attorney will generally ask you for instructions on which countries you would like protection for when reporting to you that the EPO intends to grant your patent application (ie, when reporting the “intention to grant” communication).

  • Once the patent is granted, your attorney will take any necessary steps to validate the patent in the countries of your choice. With the introduction of the UP, it is also possible to request a single patent (a UP) covering all the countries that are members of the UPC.
     

• Can I get instructions for the UP later?

  • Yes. The final deadline is 1 month after grant, but last minute can be risky.

  • After replying to the intention to grant communication, your patent may be granted very swiftly by the EPO (sometimes in as little as 1-2 weeks), therefore it is better to already have instructions on the countries of interest when instructing your EP attorney to reply to the intention to grant communication. This leaves more time to obtain any required translation, power of attorney, etc.

  • A UP can only be requested up to 1 month after the date of grant (your EP attorney will let you know this date), so the deadlines are tight.
     

• Do I need instructions regarding validations at the same time?

  • No. The final deadline is 3 months after grant, but you will get better advice if you do it all at once.

  • Validation of a granted EP patent in individual countries can be requested up to 3 months after the date of grant for most countries. However, giving your EP attorney validation instructions when requesting a UP can help them advise you on your validation strategy and on minimising the costs for the required translations.
     

• What does our EP attorney need to file a UP request?

  • Your EP attorney will usually already have the details of the relevant application. In addition, they will ask you to indicate whether the applicant has a place of business in any UPC member state and wishes to include this in the UP request.

  • Indicating a particular place of business can become relevant for litigation after grant, as it affects which national law applies for the treatment of a UP. However, this indication of a place of business is voluntary and you may decide to provide only your usual non-European address; we are seeing several non-European clients doing this, such that German law will apply by default.

  • If your patent is written in English, your attorney will also ask you whether you have a preferred translation language for the required translation into one of the other European Union languages.
     

• Is there a fee to make a UP request?

  • There is no official fee for UP requests.
     

• Is there any benefit to choosing one language over another for the UP translation?

  • We typically recommend the lowest cost option.

  • Your choice of language may differ from case to case depending on your choice of countries for validation: some countries (eg Spain) require the applicant to file a full translation of the patent, hence costs can be avoided by using the same translation for the UP request.

  • Your EP attorney can also help you pick a fixed translation language for which translations are cheaper for all your patents.

  • Also, if you are indicating a place of business in a particular UPC state, you may wish to have the patent translated into one of the languages of that state, eg as information to potential infringers or for use during litigation.
     

• When is the first/next UP renewal due?

  • A single annual renewal fee is paid for the UP, each anniversary of the filing date of the EP application falling after its grant date.

  • Renewal fees for a UP are due only after grant of your EP. Specifically, on the last day of the month containing the anniversary of the date of filing of the EP application (or PCT application) which led to the UP. This is similar to what many individual countries require upon validation of an EP patent.

  • There are two exceptions: 1) if the renewal fee would fall due after grant but before confirmation of the registration of the UP is notified, then the due date for the renewal fee becomes the date of that confirmation and the fee can still be paid without penalties up to 3 months from the due date; 2) if the renewal fee falls due in the 3 months after confirmation of the registration of the UP is notified, then the due date does not change, but the fee can still be paid without penalties up to 3 months from the date of that confirmation.

  • Renewal fees cannot be validly paid more than 3 months before they fall due.
     

• We missed paying a renewal fee, what now?

  • You have 6 months!

  • If a renewal fee is not paid in due time, it may still be paid within 6 months of the due date, with an additional fee of 50% of the missed renewal fee.
     

• The UP has been registered, how do I docket the grant and registration dates?

  • Grant date: This is the grant date of your EP patent. A UP takes effect in the UPC member states on the date of grant of the EP patent, in a similar way to what happens when validating in individual countries. The grant date is the most important date to docket, as renewals, damages for infringement, opposition period, etc. depend on it.

  • Registration date: The date of registration relates to the examination of the UP request by the EPO. If the requirements for that request are met, the EPO registers the UP in the UP register and communicates the date of that registration to the applicant. Although the process for registering a UP is not quite the same as that to validate in individual countries where certain formalities are required (eg in Spain, where translations have to be filed), you can consider the date of registration of a UP as similar to the date on which validation formalities have been completed. Although your UP/national patent is granted from the grant date, you cannot enforce it as intended if you have not requested a UP from/validated the EP patent.
     

• Our in-house team has asked for a copy of the UP: where can I find one? Will the EP attorney send one?

  • The text of a UP is the text of the granted EP patent from which the UP originates, no separate UP specification is published. The relevant EP specification will normally be marked as “EP ####### B1”. Your European attorney will often forward a copy of this specification to you, but you can also find it on Espacenet.

  • The translation provided when requesting the UP is for information only, the text of the patent remains the one of the granted EP patent.

  • Your EP attorney will forward a Unitary Patent certificate once the UP has been registered.

 
If you have any questions please contact Alessandro Sona, Gwilym Roberts, or your usual Kilburn & Strode advisor. You can also find more resources on the UP and UPC here.