European Union: European Unitary Patent: What Does It Mean For Canadians?

Last Updated: December 31 2012
Article by Scott E. Foster

On December 11, 2012, the European Parliament approved a legislative package that is aimed at establishing a single, unified European patent system.

The current system

Presently, an applicant wishing to secure patent protection in Europe must file a single patent application at the European Patent Office ("EPO") in Munich. If the application adheres to the European Patent Convention's ("EPC") rules and procedures, the EPO will grant the application and thereafter, the approved application becomes a bundle of national patent rights in each of the EPC Contracting States that are selected by the applicant.

At present, the initial application may be filed in English, German or French. Once the application is granted, a significant number of the EPC Contracting States require that the application is translated into their national language.

It is widely recognized that the translation costs and national renewal fees (a yearly fee for each country where the patent is in force) are a significant burden on small and medium-sized entities. The European Commission estimates that under the current system the cost of having a patent recognized in every EU country is approximately €36,000. Translation costs account for €23,000 of this figure. The fees are generally less of a concern for large companies with significant legal budgets than for small and medium-sized enterprises. This has been seen as a disadvantage of the current system for some time.

Presently, legal proceedings concerning the validity or infringement of any national patents are heard in the courts of that particular country. For example, an infringement action for a British patent will occur in the Patents Court or Patents County Court of England and Wales.

The new system

The new system will come into force either on January 1, 2014 or 4 months after thirteen states have ratified the agreement on the Unified Patent Court (provided that the UK, France and Germany are among them), whichever is the latest. On February 18, 2013, the agreement on the Unified Patent Court will be open for signature.

Unitary patent

An application for the unitary patent will follow the current process. However, under the new regime (for a transitional period of seven years) after a patent is granted, the applicant will be able to choose whether to obtain:

  • a patent having unitary effect in all 25 EU member states taking part (except for Italy and Spain who have opted out); or
  • the traditional bundle of national patent rights.

The unitary patent will have identical scope and protection in all participating countries. It is a single legal right covering all participating countries, rather than a bundle of individual national patent rights.

The advantages and disadvantages of each option are briefly discussed below.


One of the significant hurdles to the new system was the issue of translations. This subject threatened to derail the progress of the unitary patent at several stages over the last few years. However, the impasse was resolved and under the new system applications will have to be filed in English, French or German. If an application is filed in another language it will have to be accompanied by a translation into one of the three languages. After grant, no further translations will be submitted by the applicant, and a high-quality electronic translation will be available for informing third parties on the content of the patent. For a transitional period - until the machine translation system is fully operational - where the language of the proceedings before the EPO is French or German, a full translation of the patent specification must be provided into English, or, if the language of the proceedings is English, into an official language of a EU member state. This translation must be filed by the patentee together with the request for unitary effect.

Renewal fees

Renewal fees will be paid directly to the EPO rather than to the patent office of each participating country in which the patent is valid. This will reduce the administrative burden on patentees. The renewal fees are yet to be determined, however, it is likely to be set at a level that makes the new system more attractive for small and medium-sized entities than the current system. In any case, one yearly fee for a unitary patent is likely to be less expensive than the combined fees payable under the current system for each national patent.

Unified Patent Court

The new Unified Patent Court will have a first instance Central Division split between Paris, London and Munich. A single Court of Appeal will be based in Luxembourg. Appeals from this court will be heard by the Court of Justice of the European Union. In general, infringement proceedings will be initiated at the location of the infringement or the place of domicile of the defendant. Validity proceedings will commence before the Central Division, unless filed as a counterclaim in an infringement action. For a transitional period, applicants will be able to opt out of the Unified Court system and infringement or invalidity proceedings can still be initiated before national courts.

What does this mean for Canadians?

With the reduced renewal fees and translation costs, obtaining a unitary patent is likely to be less expensive than the current system. This will make the unitary patent more attractive for Canadian applicants who are looking for a cheaper alternative or who previously could not afford the cost of prosecuting an application to grant in Europe.

This advantage needs to be balanced against a particular strategic disadvantage: the unitary patent is a single legal right. If the legal right is successfully invalidated by a third party, or if renewal fees are through inadvertence not paid, the applicant loses all such rights in Europe. Competitors wishing to invalidate a unitary patent need to commence only one legal proceeding, and if successful, will eradicate the patent throughout Europe.

In contrast, under the current system, if a third party wishes to invalidate patents in Europe, it must attack each one separately in the courts of that particular country. Multiple legal proceedings are more expensive than a single proceeding. If the third party is successful in some countries and unsuccessful in others, the challenger will not have unfettered access to the European market. Instead, they will be limited to only those countries where the national patents has been invalidated. The bundle of national rights, while being more expensive to obtain, is also more costly to challenge. Not every competitor will have the financial capabilities to attack every jurisdiction in Europe. Obtaining national rights may, therefore, be seen as a safer alternative for the most valuable technologies or highly competitive industries.

Under the unitary patent, a patentee is likely to have less choice of where to commence infringement proceedings, as the new system specifies certain court locations. Also, the new system has rules determining where infringement proceedings should be commenced (usually in relation to the domicile of the defendant or where the infringement is occurring). In short, it is apparent that there will be significantly less scope for forum shopping under the unitary system than under the current system.

On a commercial level, any licences involving European patents will in the future need to address the unitary patent concept. For example, instead of dividing up a bundle of European patents between various licensees on a territory basis, it will be necessary for a licensor to divide up the same unitary patent into a number of different licenses by territory. Whether this will have adverse tax implications or create transfer pricing issues remains to be seen.


The unitary patent is coming. With the relatively short amount of time until the unitary patent system comes into effect, patent agents, patent lawyers and IP managers should move quickly to devise their own European strategy.

Given the significant number of transitional provisions, it is apparent that applicants will be able to stay with the current system and watch the unitary patent system from the sidelines for some time. However, there are major benefits with electing to go for a unitary patent, and those who are prepared to do so will see a significant reduction in costs. So the question is, will you take the plunge, or will you watch from the sidelines and learn from other applicants who jump right in?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
8 Nov 2016, Seminar, Ottawa, Canada

The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.

22 Nov 2016, Seminar, Ottawa, Canada

From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.

7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.