The unitary patent system, comprising the unitary patent and Unified Patent Court (UPC), is now expected to go live either later this year or early next year. The exact date will be known as soon as Germany deposits its instrument of ratification of the Unified Patent Court Agreement which will kick start a sunrise period. Following this sunrise period, the UPC will open its doors and it will be possible for a patent owner to obtain a single unitary patent which provides patent protection in at least 17 EU member states.
A brief recap
The unitary patent system is open to all 27 EU member states but not all states are taking part. If the system were to go live today then it would cover 17* EU member states. A further 7 EU member states** have indicated that they will join the system. Three member states, Spain, Poland and Croatia, have decided not to take part at this time.
Non-EU countries cannot join the unitary patent system. This means that territories such as the UK and Switzerland will not be part of the scheme.
The unitary patent system (UPS) comprises three main parts: the unitary patent, the associated translation requirements relating to the unitary patent and the Unified Patent Court.
Once the unitary patent system is live it will, once a European patent grants, be possible to:
1) validate EP patents as per the current validation process, i.e. by validating in a selection of EPC territories (such nationally validated EP patents are referred to below as “traditional” EP patents); or
2) select a European patent with unitary effect to cover the 17-24 EU member states within the scheme and use the current validation procedure to obtain patent protection in countries, e.g. the UK, outside the scheme (i.e., “traditional” EP patents will still be required for EPC member states that are outside the unitary patent system). .
Renewal fees for unitary patents are set out in the table below and these roughly equate to the renewal fees that would be paid on three to four countries under a traditionally validated EP patent.
|Unitary patent renewal fees|
|(Renewal fee to be paid to EPO)||Year 11||1460 Euros|
|Year 2||35 Euros||Year 12||1775 Euros|
|Year 3||105 Euros||Year 13||2105 Euros|
|Year 4||145 Euros||Year 14||2455 Euros|
|Year 5||315 Euros||Year 15||2830 Euros|
|Year 6||475 Euros||Year 16||3240 Euros|
|Year 7||630 Euros||Year 17||3640 Euros|
|Year 8||815 Euros||Year 18||4055 Euros|
|Year 9||990 Euros||Year 19||4455 Euros|
|Year 10||1175 Euros||Year 20||4855 Euros|
For EP patent applications filed in French/German, the UPS will require a full translation of the specification into English when a request for a unitary patent is filed. For EP patent applications filed in English, the UPS will require a full translation into any one of the EU’s official languages.
Unified Patent Court
Unitary patents will be litigated in the newly formed Unified Patent Court. The UPC will also have jurisdiction of any traditional EP patents that have been validated in countries that are signed up to the UPC unless a request to opt them out from the jurisdiction of the UPC has been made.
The possibility to opt traditional EP patents out of the competence of the UPC will be reversible but will only be available during an initial transitional period of 7 years (potentially extendable to 14 years). There will be no fee for opting out of (or opting back in to) the competence of the UPC.
Issues to consider now
The introduction of the unitary patent system will mean that all traditional EP patents that have been validated in countries that are signed up to the UPC will fall within the scope of a new court that will have the power to centrally revoke those patents.
Patent owners will therefore need to consider whether they want their traditional EP patents to fall within the competence of the new (i.e., untested) court regime or whether they want to "opt-out" their traditional EP patents from the jurisdiction of the UPC.
If patent owners want to opt out from the UPC then it will be possible to lodge an opt out request during the transitional period noted above. Although they will not be processed until the UPS goes live, it will also be possible to lodge such opt-out requests in the sunrise period that will run in the period between Germany depositing its instrument of ratification and the start of the unitary patent system (which will be on the first day of the fourth month following the deposition of the document).
[Note: the opt-out option is only available to traditionally validated EP patents. Unitary patents will fall solely within the competence of the UPC]
Early Request for unitary effect
Once the sunrise period begins it will be possible, for patent patent applications where a Rule 71(3) EPC communication has been despatched, to file an early request for unitary effect. Such an early request would allow the EPO to register unitary effect as soon as the unitary patent system goes live assuming all other EPO related requirements have been met.
Patent owners wishing to take advantage of unitary patent protection may therefore want to keep an eye out for the start of the sunrise period so that they can file early requests for unitary patent protection on any eligible patent applications.
Delaying grant of an EP patent
Unitary patents will only be available to European patents that have granted after the unitary patent system goes live. For patent applications that have a pending Rule 71(3) EPC communication with a response deadline that falls within the sunrise period it will be possible to file a request to delay grant. This will allow patents that would have otherwise have granted before the start of the new system to become eligible for unitary patent protection.
Patent owners wishing to take advantage of unitary patent protection may therefore want to keep an eye out for the start of the sunrise period so that they can file requests to delay grant on any eligible patent applications.
* Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden
** Cyprus, the Czech Republic, Greece, Ireland, Hungary, Romania, Slovakia
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