How to get a Unitary Patent

Also termed the European patent with unitary effect, the unitary patent (UP) is a single patent right covering all the states that have taken part in the enhanced cooperation procedure to create the right and fully ratified the UPC Agreement (UPCA). UPs only became available once the UPC was operational (as of 1 June 2023) as the UPC is the only forum in which UPs can be enforced.

What states does a particular UP cover? UPs may eventually be available which cover the 24 UPCA signatory states of the 27 EU member states, but only once all have fully ratified the UPCA. Currently only 18 have fully ratified the UPCA and participated in the enhanced cooperation to pass the Unitary Patent Regulation. These states are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovenia, and Sweden.  

A UP granted on Day 1 of the UPCA being in force (1 June 2023) and any EP granted unitary effect (ie UP status) up to and including 30 August 2024 only covers the 17 EU member states which had both taken part in the enhanced cooperation to create the unitary patent and also fully ratified the UPCA in that period (the above minus Romania). Regulation 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of unitary patent protection was used to establish the unitary patent (UP) in the EU despite the lack of the universal agreement by member states for the measure. Spain, Croatia and Poland did not participate but it is expected that others that have not fully ratified the UPCA yet, may do so in due course (these are Cyprus, Czech Republic, Greece, Hungary, Ireland and Slovakia). 

Each UP, at the point it is granted unitary effect, will take effect in however many states are part of the system at that date. This will not change if other states join the system during the lifetime of the unitary patent, but is fixed at the date of grant of unitary effect. Thus a UP will only ever have effect in the states that have both ratified the UPCA and taken part in the UP Regulation at the time that particular patent's unitary status is registered.  See more on this here.

The application process for UPs will be the same as that for a standard EP, ie centrally via the EPO. At grant the proprietor will have the option to select unitary protection for its EP rather than a bundle of nationally designated EP rights. Now that the UPCA is in force any new EP application or EP application that is already in the EPO system can be converted into a UP within a month of grant (nb the EPO has only been able to start granting UPs now that the UPC system is in place (from 1 June 2023).

Exclusive jurisdiction of the UPC: Both UPs and (non-opted out) EPs can be litigated in the UPC, although for non-opted out EPs there will be a transition period during which there will be parallel jurisdiction between national courts and the UPC (7 years plus a possible further 7), but this will not affect UPs which will be under the exclusive jurisdiction of the UPC at all times. EPs can be opted out of the jurisdiction of the UPC (see here) but UPs cannot.

Patent coverage for the rest of Europe and other EPC states: Even if a UP is used, if full European coverage is required then separate EPs will need to be obtained for non-EU EPC states like the UK, Norway, Turkey and Switzerland, and also for any EU member states which have not taken part in the enhanced cooperation procedure and signed up to the UPCA (currently Spain, Poland and Croatia) or have not fully ratified the UPC Agreement at the date that unitary status is granted (currently this encompasses Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, Slovakia). If the EPO application route is not to be used, then national patents will still be available from national patent offices by direct application and will be litigated in national courts.

Rules and guidance: A consolidated version of the draft Rules relating to the Unitary Patent Protection (dealing with the administration of the UP by the EPO) is available here. 

Costs: The EPO has adopted what it refers to as a business friendly fee pattern for the fees payable for unitary patents. The Select Committee of the Administrative Council of the EPO endorsed the "True Top 4 proposal" tabled by the European Patent Office on renewal fees applicable to the unitary patent. This proposal corresponds to the charges for renewal in the Top 4 most popular validation jurisdictions: Germany, France, Great Britain and the Netherlands (the alternative had been the "Top 5" approach which included Swedish designations). There is provision for a reconsideration of this Top 4 basis after 4 years. 

For more comparative detail on fees see the "Comparison of fees and external costs between a European Patent and a Unitary Patent", submitted by the President of the EPO to the Select Committee to assist in their deliberations, which compares the costs of registering EPs in 1,2,3,4,5,6 or 7 designations and all 25 designations that would be covered by the UP under current participation rates with the cost of the revised proposal. The comparison assumes that grant is in year 4. The figures show cumulative savings on this basis for 4 or more designations over 20 years although all the assumptions should be reviewed. The EPO guidance gives details of the renewal fees to be paid and describes the renewal fee level as "very attractive and business friendly" (see pages 10-11). 

See also on this hub: Which states are in the UPC and where will a UP have effect?

For more on the UPC and unitary patent see our series of feature articles published in PLC Magazine's March and April editions 2022 and shared in pdf form on our IP blog here.

• SEE MORE ON OUR UPC AND UP HUB
  • Hub home page & How we can help
  • The UPC & UP – an introduction
  • UPC court structure
  • UPC: Jurisdiction and opt-out
  • Which states are in the UPC and where will a UP have effect
  • The UPC Rules of Procedure
  • How to get a UP 
  • UPC Court fees
  • Impact of UPC and UP on patent portfolios, co-ownership and licensing
  • UPC: mediation and arbitration
  • Key documents (legislation and agreements)
  • Costs