The European Unitary Patent Is Coming…

And why you should take notice

The European Unitary Patent Is Coming…

And why you should take notice

Andrew Clarke

At innofy we live and breathe innovation. And we like to do things differently. That is why we really can’t wait for the imminent introduction of the European Unitary Patent.

As fully explained in the Agreement on a Unified Patent Court (UPCA), the Unitary Patent is the innovative initiative from the European Patent Office (EPO) that will supplement and improve the existing centralised European patent granting system. This is great news for clients looking to commercialise their inventions internationally, offering patent owners a cost-effective option for patent protection and dispute settlement across Europe. We are excited by this change.

It is a common misunderstanding that successfully navigating European examination is rewarded by a European Patent. This regularly leaves patent owners surprised and disappointed to learn that their celebrated patent grant by the EPO precedes the onerous and costly European patent validation process. On top of this, once the patent has progressed through the EPO, annual renewal/maintenance fees become due for each European country that is selected for validation.

The Unitary Patent will provide an attractive alternative to the partially streamlined conventional European system. Excitingly, it will make the patent procedure in Europe much simpler and more cost effective.

The Current System for Obtaining Patents in Europe

Although the EPO facilitates a streamlined process for filing and examination of patent applications across EPC Member States, after patent grant patents must be validated and maintained individually in each country where they take are effect. This is a complex and potentially very costly process as each individual country has independent validation requirements – including an assortment of translation costs, validation fees, and overseas agent fees. The costs often become substantial and are dependent on the number of countries chosen in which to validate the European patent.

How will the Unitary Patent work?

The European regional phase entry system, examination and acceptance procedures are expected to operate exactly as they currently do. That is, there will be no change to any of the pre-grant processes (which are already centralised by the EPO). After patent grant, however, patent owners will be given a choice to:

  • request unitary effect – thereby getting a Unitary Patent which provides uniform patent protection in up to 26 European Member States; or
  • request national validation in each European Member State, consistent with the current approach.

What Countries Are Included in the Unitary Patent?

There are currently 28 countries in the European Union. However, Spain, Poland, and Croatia have refused to take part. The 25 Member States who have signed the Unitary Patent Court Agreement (UPCA) are:

AustriaBelgiumBulgariaCyprusCzech Republic
RomaniaSlovakiaSloveniaSwedenUnited Kingdom

Despite the Brexit vote, the U.K. have been vocal in their support of the Unitary Patent, and have stated they do not wish their imminent exit from the European Union to detract from getting the system up and running.

When Will The Unitary Patent Become Available?

It’s been a long road, but it looks like the finish line is near. The Unitary Patent system will be brought into force when at least 13 Member States (that must include Germany, France and the U.K.) have ratified the Agreement. As of July 2017, 11 Member States have ratified (including France). Therefore – the world is waiting on only the U.K. and Germany to ratify the Agreement.

The U.K. recently presented Parliament with a draft of the remaining piece of secondary legislation required for ratification. Things are not quite as straightforward in Germany, however, with ratification of the UPCA currently on hold (despite already being passed in Parliament) because of a legal challenge to the constitutionality of the legislation enabling ratification.

Italy, Slovenia and Lithuania are reportedly on the verge of ratifying the UPCA – suggesting that, on launch the Unitary Patent will likely encompass between 15-20 countries (as the U.K. and Germany are non-negotiable).

It’s expected that all the required ratification will be completed in 2017, meaning the Unitary Patent may become available early next year.

The Unitary Patent: Improving simplicity and lowering costs

Why are we so excited by the Unitary Patent?

  • The EPO will be a “one-stop-shop” for European patent rights;
  • No additional fees will be due for the filing and examination of the request for unitary effect or for registration of a Unitary Patent;
  • Post-grant translations will no longer be required (after a six-year transitional period);
  • An end to the fragmented renewal fee system, as renewal fees are combined into a single procedure, currency and deadline;
  • EPO has announced “very competitive” renewal rates (especially for the first ten years);
  • All processes handled centrally by EPO – not individual Member State patent offices;
  • A uniform level of protection will be effected in each European Member State – substantive law governing patent infringement is harmonised in the Agreement of a Unified Patent Court.

The advantages of the Unitary Patent are clear. However, every situation should be considered on an individual basis and a Unitary Patent may not necessarily always be the best solution to obtaining your European patent rights. For example, one potential negative of the new system is that it presents a single point for revocation of your rights in Europe, as opposed to each European national patent being independent from one another. Please contact us to discuss the best route to obtaining patent protection in Europe for your technology.

The Unitary Patent system is currently expected to start in the first quarter of 2018. Naturally, we will keep you updated as soon as any further news is released.


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