The Unitary Patent (UP) is a new patent right which
covers most of Europe at a fraction of the cost of an equivalent
European Patent (EP). However, unlike an EP which is a bundle of
national rights, the Unitary Patent is a single unitary right
meaning it cannot be 'pruned' geographically on renewal and
it may be revoked as a whole in a single action. We explain the key
points of the Unitary Patent below.
The Unitary Patent (UP) (also known as a 'European patent
with unitary effect'), is a patent which has been granted by
the European Patent Organisation in the same way as an existing
EP, but for which the patent
owner has requested unitary effect across the participating member
states. The unitary effect across the participating member states
of the EU is created by EU Reg. 1257/2012, and to this extent the
patent can be considered an 'EU' right (compared to EPs, which have no basis in EU
The application process for a UP is the same as for an EP up until the grant of the patent.
Provided all participating states have been designated in the
application, the patent owner then has 3 months to request unitary
effect and file the necessary translations (if in English to
another official language of the EU, and if in French or German to
English). This has the effect of turning its bundle of national
rights into a single 'unitary' right covering the EU member
states which have ratified the Agreement on a Unified Patent Court
at the date on which unitary effect if requested. A UP will therefore cover up to 25 of
the EU 28 member states (excluding Spain, Poland and Croatia).
A UP will not cover EU
states which are not participating in the Unified Patent Court
(UPC) or have failed to ratify the agreement (such as Spain, Poland
and Croatia), nor other EPC contracting states which are not
members of the EU (e.g. Turkey). If an applicant requires patent
protection in those countries it will need to validate its EP in those countries. EP validations may be obtained from
the same patent application.
The renewal fees for a UP
are €35,555 over the 20 year life of the patent. This is
significantly less than the cost of validating and renewing an
EP in each of the 26
participating member states. Nevertheless, it is comparatively rare
for companies to validate an EP in all member states and, unlike
an EP, a UP cannot be 'pruned' to
reduce renewal fees.
A UP offers patent owners an
additional option for protecting their inventions in the EU. It
will not always be the right option for every patent owner, but
should at least be considered as part of a long term patent
strategy. Patent owners should discuss the most effective strategy
for their business with their advisors.
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.
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