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EUROPEAN UNITARY PATENT

EUROPEAN UNITARY PATENT

The UK government announced in November 2016 that the UK will ratify the Unified Patent Court (UPC) Agreement.  This was a clear indication that the UK will participate in the UPC and European Unitary Patent (UP).  In other words, the UK’s decision to leave the European Union on 23 June 2016 did not stop the UK wanting to participate in the UPC and UP.

Political activity in the UK and a new legal challenge in Germany has delayed ratification by Germany and the UK.  Ratification by Germany and the UK is now expected to occur in 2018.  The UPC will open its doors and the UP would become available to European patent applicants three months after the Agreement comes into force. The
current expected start date for the UP is mid- to late 2018. However, there have been many delays to the start of the UPC and the UP, and further delays may occur.

This page sets out briefly how the European Unitary Patent will work and our view of some of the possible advantages and disadvantages of the UP.  It accompanies our pages relating to the UPC and the options for opting out of the UPC.  Please refer to these other pages for more information.

Introduction to the UP

At the time of grant, the applicant for a European patent will be able to request an EUP.  This will provide a single patent right for the “contracting member states” effective at the time the patent is granted.  Other EPC countries can be covered by a normal validation of the European patent in those countries.

The contracting member states are those who have ratified the UPC Agreement at the time of request for the UP.  As of June 2017, 14 countries will be covered by the UP.  A table of the potential Contracting Member States is given below:

Countries that have ratified or must ratify (so will be Contracting Member States) Countries that have not yet ratified
Austria Cyprus
Belgium Czech Republic
Bulgaria Greece
Denmark Hungary
France Ireland
Italy Latvia
Luxembourg Romania
Malta Slovenia
Netherlands Slovakia
Portugal Poland2
Sweden Spain2
Finland Croatia3
UK1
Germany1
Estonia
Lithuania

1: yet to ratify but required to ratify before the UPC comes into force

2: have indicated that they will not ratify before the UPC comes into force

3: Croatia only recently joined the EU and is entitled to accede the UPC Agreement, but has not done so yet

However, the number of ratifications of the UPC Agreement is likely to increase in 2018.  Certain countries, such as Slovenia, Lithuania, Latvia, Estonia, and Hungary have indicated that they are ready to ratify the agreement.  As such, it is predicted that around 20 countries will be covered by the UP initially.

The UP will always be litigated in the UPC.  There is no option to “opt out” an UP from the UPC.

How can patentees get an UP?

Request for the UP must be done 1 month from publication of grant at the latest.  In other words, the request for the UP must be done shortly after responding to the EPO intention to grant (Rule 71(3) EPC) letter.  There is no way to convert currently granted European patents into UPs.  As such, European patent applications receiving Rule 71(3) EPC letters now will be the first applications likely to have the option to request an UP.

There will be no official fee for the request for an UP.  A translation of the European patent application must be filed on request for the UP (namely, 1 month from publication of grant).  There will be a single annual renewal fee payable for UP.  This is paid to the EPO.  The potential translation and renewal fee cost advantages are discussed in more detail below.

If an EUP is requested, then validation of the European patent application must still be done for countries that have not (at that time) ratified the UPC Agreement.  Validation will still be required if protection is wanted in, for example, Spain, Switzerland or Norway.

Potential translation and renewal fee cost benefit of UP

The UP potentially provides a cost saving with respect to the translation requirements and renewal fees.

With respect to translations, the approved text of the European patent will need to be translated entirely into English (if EP is in French or German) or another language of an EU member state (if the EP was in English) during a transitional period.

After 6 years of the transitional period (and at 2 year intervals thereafter up to 12 years in total), the machine translation capability is reviewed. If the machine translations are deemed sufficiently accurate, then the transitional period will be terminated.  After that time, no translation will be required to be filed by the applicant.

Therefore, a cost benefit in the transitional period will be realised for proprietors who would normally validate in at least one full translation country (and no longer need to because that country will be covered by the UP).

A single renewal fee is payable, and the fee equivalent to around the top four national renewal fees (that being DE, UK, FR and NL). An estimate of the level of fees is given below.  The cost benefit here will only be realised for those proprietors who would normally validate in at least four countries.

Year
UP renewal fee proposal (Euro)
Year
UP renewal fee proposal (Euro)
11 1460
 2 35 12 1775
 3 105 13 2105
 4 145 14 2455
 5 315 15 2830
 6 475 16 3240
 7 630 17 3640
 8 815 18 4055
 9 990 19 4455
10 1175 20 4855

Of course, any increase in cost the translation and renewal fee may still be beneficial to gain the additional coverage of the UP (at least 13 countries, including the UK, France and Germany).

A comparison of some of the pros and cons of the UP are provided below.


Pro

Con

 

Potentially reduced translation requirement  and cost in the transitional period (of up to 12 years) if normally validate in at least one contracting member states which is outside of the London Agreement

 

Potentially more translation requirements and costs during transitional period if normally only validate in London Agreement  countries

Reduced translation requirement and costs after transitional period when Google translate is deemed sufficiently accurate

Potentially higher renewal fees if normally only validate in 3 countries (e.g. UK, France and Germany)

Potentially reduced renewal fee if normally validate in 4+ of the contracting member states

Will not include any EU country that has not ratified at the time of request for the UP (such as Spain)

Covers at least 13 countries including the UK, Germany, France, Austria, Belgium, Bulgaria, Denmark, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland

Does not cover any EPC country that is not a member of the EU (except possibly the UK after Brexit) – therefore still need to validate as before in these countries if desired

The UP will always fall under the jurisdiction of the UPC

 

Not possible to opt-out of UPC ……………….

Compensation scheme will be available to reduce the costs of translation for SMEs,  natural persons, non-profit organisations, universities and public research organisations that are resident in a contracting member state Cannot selectively let states lapse during lifetime of patent to reduce renewal costs

This information is simplified and must not be taken as a definitive statement of the law or practice.