The European Patent Convention has 39 contracting states, including all the EU Member States. The idea of the unitary patent is to have a single patent that will be valid throughout the EU area, like an EU trade mark or registered Community design. This should make a significant contribution to the free movement of goods within the single market. While a unitary patent will not give protection in the UK, inventors from this country will be able to apply for unitary patents to protect their inventions throughout the EU (while using the European Patent system to get patents in other EPC countries, if they wish).
In this article, our intellectual property lawyers explain how you can apply for a unitary patent, how much it will cost and how it compares to national patents.
Contents:
Unitary Patent vs National Patent
The European Patent Convention didn't just create a system to get a bunch of national patents with a single application. It also ensured that the substantive patent laws of the contracting states were identical. The requirements for both European Patents and patents granted under national laws in the contracting states are the same. A European Patent GB, covering the United Kingdom, can be obtained under exactly the same conditions as a domestic UK patent under the Patents Act 1977. Which one to go for is therefore a matter of the desired coverage, cost effectiveness, and filing strategy.
Which option should you choose? There are no one-size fits all solutions to that dilemma. It's common practice for UK businesses to file their initial application for patent protection in the UK, then to file later for European patents in other countries and whatever patents they want in the rest of the world. To enable this to happen, the international patent system gives an applicant a one-year priority period during which applications are in effect accorded the application date of the very first application filed to protect the invention.
Filing for a unitary patent, and securing protection in 27 EU Member States at a stroke, is an attractive idea. Before the unitary patent, many large patent owners would choose to file in selected EU Member States only, on the basis that if they secured the French, Dutch, and German markets, and perhaps the Spanish, Italian and Polish markets, infringers would not consider what remained attractive enough to bother with. While you could deal with all 27 countries with a single application, there are validation fees to be paid for each country in which you want to have a European Patent granted, and then hefty renewal fees for each country. By contrast, the unitary patent will have no application fee and the renewal fees will be lower too.
It's a system that will clearly appeal to any business that operates in more than a handful of EU Member States, as well as to multinationals which operate throughout the EU.
How to apply for a Unitary Patent
Applying for a unitary patent will not be very different from applying for any other European Patent. It will simply be a matter of validating it for the EU along with other countries where protection is wanted (including Spain and Croatia, the two EU Member States that remain outside the unitary patent). To do this you will be well-advised to instruct a skilled patent attorney, who will be able to draft a patent application in a way that will maximise the chances of success as well as giving you the optimum level of protection.
The application is the same as an application for a European Patent, except that in due course it will be validated for the EU. It will be examined in the European Patent Office in the same way as any other European Patent application: there is no additional application fee. After the application is granted, a written request for unitary effect must be filed with the EPO. Applications for European Patents must be in English, French or German: Unitary Patents will have to be translated into an additional EU language if filed in English, and into English if filed in French or German, but only during a 12-year transitional period.
Unitary Patent renewals
How often do you need to renew a Unitary Patent?
Like all European patents, unitary patents will have to be renewed annually.
How do I renew a Unitary Patent?
The renewal fee will have to be paid to the European Patent Office, which will distribute half of it to the EU members party to the unitary patent.
Renewal fees recognise that most patentees will not really want protection in all 27 countries. Only about 1 per cent of European Patents are validated in all contracting states. The renewal fees for a unitary patent have therefore been calculated on the basis of the cost of renewing the bundle of European patents that are most commonly renewed: Germany, France, the Netherlands, and the UK (notwithstanding Brexit for these purposes).
Unified Patent Court
The Unitary Patent is closely tied up with the Unified Patent Court, they will come into operation on the same date, and the Unitary Patent Court will have exclusive jurisdiction within the EU (except Spain, Poland, and Croatia, as things stand) over infringement and validity of Unitary Patents and (unless the owner opts out) over other European Patents too. It will reduce the problems that come from national courts in EU Member States reaching different conclusions in cases involving the same patent. The Agreement on the Unified Patent Court has been signed by all the Member States of the EU except Spain, Poland, and Croatia. The UK originally ratified the agreement, but withdrew following the 2016 referendum.
Currently, if you need to sue for infringement, you must go to national courts - and you might find that they come up with widely divergent results. It is not unheard of to find your patent in one country is held to be valid and infringed while in another country it is invalid, or not infringed. And in Germany and Austria, there is the added problem of bifurcation - infringement litigation might be going on in court while the patent office is considering whether the patent is valid, leading to the possibility that the patent will be held to be infringed but then invalidated soon afterwards.
The Unified Patent Court will bring some much-needed consistency to the patent litigation world, although it will only cover the European Union, and two Member States (Spain and Croatia) have opted out of the arrangement. Meanwhile, the UK has opted out of the EU altogether, but the establishment of the Unified Patent Court will still be helpful to UK patent owners enforcing their rights elsewhere in Europe. The UPC will begin operations on 1 June 2023, the same date from which unitary patents will become available.
Owners of existing European Patents covering countries that are party to the UPC agreement will be able to opt out of its jurisdiction during a seven-year transitional period. Not opting out will mean that proceedings can be brought in national courts or the UPC during that period. Once the transition is over, the UPC will have exclusive jurisdiction over European patents within the relevant EU Member States.
Summary
The Unitary Patent, along with the opening of the Unified Patent Court, will transform patenting and patent litigation in most of the EU. The success of unitary trade marks and registered designs in the EU has already demonstrated that businesses want this EU-wide approach to IP, although patents are in many ways a different and more complicated proposition. As the new unitary patent is grafted onto the existing European Patent system it has the merit of familiarity to UK patent lawyers, so businesses that already file for European Patents will find it easy (and much cheaper) to get the protection they need in the EU.
