The Unitary Patent should soon add a new level of protection for patent owners in Europe. This post therefore presents the essential characteristics of the Unitary Patent, and how it differs from the current patenting system.
What is the current patenting system in Europe?
In Europe, it is currently possible to apply for a patent through the national, international, and European routes.
Under the national route, applicants can apply for a patent in one country at a time. The applicant must file the application at the IP offices in the countries where she seeks protection. The national route leads to national rights and confers protection at national level.
Under the international route, the Patent Cooperation Treaty (PCT) provides a unified procedure for 152 different contracting states. A PCT application allows patent holders to simultaneously seek patent protection in a large number of countries by filing a single “international” patent application. It is not necessary to file several separate national or regional patent applications. The granting of patents remains however under the control of the national or regional patent offices.
Under the European route, applicants are granted European patents for some or all of the contracting states to the European Patent Convention (EPC) and to the current extension states (Bosnia and Herzegovina, Montenegro). A European patent is a bundle of national patents. It has the effect of and is subjected to the same conditions as a national patent granted by that state. This is true for each of the contracting states for which it is granted.
What is a Unitary Patent?
A European patent with unitary effect or Unitary Patent is a new type of European patent, to which unitary effect is given. The Unitary Patent is not a new intellectual property title but a new legal characteristic given to an already existing title: the European patent.
The Unitary Patent will be granted by the EPO under the rules and procedures of the EPC. It will co-exist with the current patent system. Patent proprietors will be able to choose between European patents, national patents and Unitary Patents.
It will not be possible to obtain a European patent and a Unitary patent for the same invention.
Which legal instruments created the Unitary Patent?
In March 2011, the Council of the European Union issued a decision authorising enhanced cooperation for the creation of a unitary patent protection.
Enhanced co-operation is a mechanism set out in the Lisbon Treaty. It allows 9 or more EU member states to establish advanced integration or cooperation in any area within the EU structures, without the other member states being involved.
The Unitary Patent package consists of:
- Regulation (EU) N°1257/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of the unitary patent protection.
- Regulation (EU) N°1260/2012 dated 17th December 2012 implementing the enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements.
- The Agreement on a Unified Patent Court (UPC Agreement), an agreement between EU countries to set up a single and specialized patent jurisdiction. This Agreement must still be ratified by most Member States. The UPC Agreement will enter into force on the first day of the 4th month after the deposit of the 13th instrument of ratification, including the ratification of Germany, France and the United Kingdom. These 3 countries were indeed the 3 Contracting Member States in which the highest number of European patents had effect in 2012. Currently 15 Member States including France have ratified the UPC Agreement.
What are the goals of the Unitary Patent?
The Unitary Patent aims at:
Reducing the current cost of patenting. Patenting an invention in Europe can be costly, as once granted, a European patent can only be enforced at national level. This may also entail translating it into the official language of the country concerned and paying validation and annual renewal fees in multiple states. The Unitary Patent on the contrary will offer simpler and cheaper translation requirements. It will also be subject to a single set of renewal fees. This will allow for a reduced patenting cost.
Improving legal certainty and reducing litigation costs. Patents on inventions with a high market value are frequently the subject of litigation. Due to the lack of a unified litigation system, this leads to parallel lawsuits in different countries and divergent outcomes. The Unitary Patent will be under the exclusive competence of the Unified Patent Court. It will thus depend only on a single set of rules. This should guarantee a unified application of the law and prevent any parallel and discordant law suit. Finally, the decisions of the UPC, will have authority in all participating Member States.
When will it be possible to apply for a Unitary Patent?
Patent holder will be able to request unitary effect for any European patent granted on or after the date of entry into force of the UPC Agreement. It will however not be possible to request unitary effect for patents granted before that date.
In which countries will the Unitary Patent be available?
The Unitary Patent will be available in the participating Member States that have signed and ratified the UPC Agreement.
26 countries (all EU Member States besides Spain and Croatia) have adopted the European Regulations. 25 countries (all EU member states except Spain, Croatia and Poland) signed the UPC Agreement. However, only 15 Member States have so far ratified the UPC Agreement.
The Unitary Patent will be available for the territories of the Member States that have ratified the UPC Agreement. Hence although the Unitary Patent may one day be available for 26 countries, it will start off with less countries. The Unitary Patent will however cover the territory of at least 17 countries (ie the 15 member states that have already ratified the UPC Agreement + UK and Germany). The extension of the Unitary Patent’s territorial coverage will thus be progressive as the rest of the Member States will ratify the agreement over time.
To maintain a Unitary Patent, the patent holder will have to pay an annual renewal fee directly to the EPO.
The Select Committee endorsed in December 2015 the True Top 4 proposal for the renewal fees applicable to the Unitary Patent. The True Top 4 corresponds to the total sum of the renewal fees currently paid for the four most frequently validated countries. These are: Germany, France, UK and the Netherlands. The True Top 4 gives also special consideration to the situation of the SMEs.
|2nd year:||35 EUR||12th year:||1, 775 EUR|
|3rd year:||105 EUR||13th year:||2, 105 EUR|
|4th year:||145 EUR||14th year:||2, 455 EUR|
|5th year:||315 EUR||15th year:||2, 830 EUR|
|6th year:||475 EUR||16th year:||3, 240 EUR|
|7th year:||630 EUR||17th year:||3, 640 EUR|
|8th year:||815 EUR||18th year:||4, 055 EUR|
|9th year:||990 EUR||19th year:||4, 455 EUR|
|10th year:||1, 175 EUR||20th year:||4, 855 EUR|
|11th year:||1, 560 EUR|