Unitary Patent
Under existing arrangements European patents are validated after grant in any number of European countries selected from those that are contracting states of the European Patent Convention (EPC). Validation involves meeting certain procedural requirements after grant of the European patent, including in many instances providing a translation into the local language. Renewal fees are subsequently paid to the different national authorities of the EPC states in which the patent is validated. The Unitary Patent (UP) will effectively work in the place of the existing post-grant validation system for the EPC states that are covered by the UP.
Contents
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Territorial Coverage ►
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Procedure for Registering a UP ►
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Translations ►
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Transitional Arrangements ►
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Opt-outs ►
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Renewal Fees ►
The UP theoretically has the potential to cover all 27 member states of the European Union (EU), but some EU states have decided not to participate, notably Spain (ES) and Croatia (HR), and others may look to participate at a later date as part of what is called “enhanced cooperation”. As things stand, 17 EU states will be covered by the UP at the outset. These are Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), the Netherlands (NL), Portugal (PT), Slovenia (SI) and Sweden (SE).
As more EU states join the system, the list of EU states covered by the UP may expand. However a UP will only cover the EU states that are participating in the system at the time a respective European patent is registered as a UP. Consequently, there will be multiple generations of UPs with different territorial coverage.
A European patent potentially covers all states contracting to the European Patent Convention (EPC), currently numbering 38 countries. So, even once fully implemented, the UP will only ever cover a subset of the countries it is possible to cover with a European patent. Important EPC states that are not EU states include Norway (NO), Switzerland (CH) and the United Kingdom (GB). It is unlikely that any non-EU states will be part of the UP in the foreseeable future.
Many European patents will continue to be validated in the conventional way, irrespective of the UP. We can expect some European patents to continue to be validated entirely outside the UP system, and others to exist as a mix of a UP and a conventionally validated European patent. However, it is important to note that it will not be possible both to register a European patent as a UP and to validate the patent in the UP states in the conventional way – a choice must be made between the two systems for the UP states at least.
The European Patent Office (EPO) will administer the UP. Patent proprietors will obtain the UP by registering a European patent for the UP after the grant of the patent by the EPO.
The process up to grant of a European patent will not change. European patent applications will continue to be filed as first applications, direct filings claiming priority from priority applications filed elsewhere or by entering international (Patent Co-operation Treaty or PCT) applications into the European regional phase. There will be no changes to the regimes for search or examination. Designation fees, excess claim fees and renewal fees due to the EPO while applications are pending will remain the same. There is no separate designation of a UP during the application process. Any European patent application filed now (or as far back as 2007) designating “all contracting states” in the usual way (or at least the EPC states covered by the UP) is capable of being registered as a UP after grant.
In order to register a European patent as a UP, a request must be filed to the EPO within 1 month after the date of grant. This deadline is not extendable. No official fee will be payable for this step, but a translation of the entire patent will be required.
It is important to note that the deadline for completing the steps to validate a European patent in most countries using the conventional system is typically 3 months from the date of grant. The deadline for registering a UP therefore creates a tighter time frame for deciding how to proceed with European patents post grant.
When the language of the proceedings before the EPO by which the European patent was obtained was English, a translation of the entire European patent into another official language of the European Union is required. When the language of the proceedings was French or German, a translation into English is required.
In some cases the European patent application will have been filed in a language other than French, German or English, before a translation into one of these languages (as the language of the proceedings) was provided. In this case, certain entities are entitled to compensation from the EPO for the further translation required to register the patent as a UP.
Any European patents that have a date of grant before the date the UP system comes into force will not be registerable as UPs – they must be validated in individual countries using the existing validation system. However, it will be possible to register any European patents granted after the date that the UP system comes into being, and nothing needs to be done during the application procedure to secure this.
Usefully, the EPO has indicated that it will be willing to accept requests to register European patents as UPs early (e.g. prior to grant) in the run up to the new system starting. Once the commencement date of the UP system has been set, an early request for unitary effect may be filed for any European patent for which a Notice of Intention to Grant (Rule 71(3) communication) has issued.
The EPO has also indicated that it will accept requests to delay the date of grant of certain European patents in order to allow them to fall under the scope of the UP system. Again, once the commencement date of the UP system has been set, a request to delay grant of the European patent can be submitted for any European patent for which a Notice of Intention to Grant (Rule 71(3) communication) has issued but not yet been responded to.
There will be a “sunrise” period of three months before the new system comes into being during which it will be possible to “opt out” existing European patents from the jurisdiction of the UPC. No official fees are payable for this. If European patents are not opted out of the UPC, then they will automatically fall under the jurisdiction of the UPC. Patentees will thus have two options: 1) do nothing and allow the European patent to fall under the jurisdiction of the UPC; or, opt out of the UPC. The opt-out regime will remain in place for the first 7 years of the new system, extendable up to 14 years.
The UP attracts a single renewal fee, payable to the EPO. The cost of the UP renewal fee is set at the sum of the equivalent national renewal fees that would have been payable to the national patent offices of the top 4 countries in which European patents were validated in 2015.
It will be appreciated that the cost of renewing a UP across its life will be considerably less than the cost of renewing equivalent national validations across all of the (initially 17) countries covered by the UP. However, the majority of European patents are currently validated in three or fewer countries, often including the United Kingdom, which is not part of the UP system. For these patents, renewal fees will be costlier under the UP, but with the advantage of wider geographical protection.