The European patent with unitary effect (so-called “Unitary Patent”) has now been in existence for over a year since June 2023. As an object of property it is a single unitary right covering the territory of the “Participating Member States” of the European Union (EU).
When the Unitary Patent system was devised, all EU member states were eligible to take part, but even then it was clear that for some it was a step too far. Of the original 28 EU Member States able to take part in the UPCA, a number fell by the wayside early on.
Spain and Poland formally declined to sign the UPCA, Croatia joined the EU after the original treaty signature date and has not yet indicated if it wants to sign-up or not (let alone ratify), and the United Kingdom left the EU altogether. There are therefore 24 EU Member States of the remaining 27 which have signed the UPCA, but only 18 states have ratified the UPCA which is necessary for the Unitary Patent system and Unified Patent Court (UPC) to come into effect for the state concerned.
When the UPCA came into effect on 1 June 2023, there were 17 states which had ratified the UPCA. Consequently, the Unitary Patents granted since then only covered 17 EU Member States. However, Romania ratified the UPCA with effect from 1 September 2024 which means that from that date, any Unitary Patent where the registration of unitary effect is on or after this date will cover 18 EU Member States.
We therefore now have the situation where there are different “generations” of Unitary Patents in effect where the territorial scope is governed by the date of registration of unitary effect. Note that this date is different from the date of grant of the associated underlying European patent application.
First generation – 1 June 2023 to 31 August 2024
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
Second generation – 1 September 2024 to (?)
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia and Sweden.
There will be further “generations” of Unitary Patents to come as the other “Participating Member States” ratify the UPCA which are currently:
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Cyprus, Czechia, Greece, Hungary, Ireland and Slovakia.
The EU member states which have not yet signed the UPCA and not yet able to ratify the UPCA are:
This fact means that in any due diligence processes, licensing, and/or litigation strategies which involve a Unitary Patent it will be necessary to consider which “generation” a Unitary Patent belongs to so that the territorial extent can be properly understood. The European Patent Register maintained by the EPO displays the EU Member States covered by a Unitary Patent in the Unitary Patent section of the Register.
If you have any questions, please contact Nick Bassil or your usual advisor at Kilburn & Strode LLP.