Unitary Patents FAQs
- Q. What is a Unitary Patent? How does this differ from the current (“classical”) European Patent?
A. A Unitary Patent (formally a European Patent with Unitary Effect) will be a single patent which provides protection for the same invention in multiple EU countries at once. A single annual maintenance fee will apply and lawsuits involving Unitary Patents will be subject to the jurisdiction of a single, international court: the Unified Patent Court.
This is different from a “classical” European Patent, which is effectively a collection of separate national patents having a centralised application and examination procedure and which take on a separate existence in each country after grant. This means that, for a “classical” European Patent, multiple sets of annual maintenance fees need to be paid to keep the patent in force in multiple countries, while lawsuits involving “classical” European patents may need to be pursued in parallel in different countries with different legal systems.
- Q. Is the Unitary Patent replacing the current European Patent and/or national patent systems?
A. No. The Unitary Patent will be an alternative option running in parallel to the existing “classical” system. When the European Patent Office grants a patent, the patent proprietor will have a choice of “requesting Unitary Effect” to turn it into a Unitary Patent, or validating it in individual countries in line with the “classical” procedure.
- Q. Will a Unitary Patent protect my invention in every European country?
A. No. The EPO grants patents for 38 European countries, which include all 28 EU countries as well as some non-EU countries such as Switzerland and Norway. However, the Unitary Patent will only provide protection in EU countries, and – at least to begin with – not all EU countries are taking part in the Unitary Patent system. Unitary Patents granted in the early stages of the system will probably only cover 13 countries, with more expected to join the system later.
To get a European Patent in non-EU countries or in any EU countries which are not part of the Unitary Patent system you will need to validate your European Patent in the “classical” way in those countries, just as you do at present. Depending on where you want to protect your invention, you could use a combination of a Unitary Patent and additional “classical” validations.
- Q. How do I apply for a Unitary Patent?
A. The application process for a Unitary Patent will be exactly the same as for a “classical” European Patent. A patent application needs to be filed with the European Patent Office (EPO), which will search and examine the application in line with the existing procedure. Unitary Patents will be granted by the EPO, just like “classical” European Patents and based on the same criteria of industrial applicability, novelty and inventive step.
You do not need to decide whether you want a Unitary Patent until the EPO is ready to grant a patent, which can often take at least 3 to 5 years from the filing of the application. When the EPO grants the patent, you will have a one month period to file a request for “Unitary Effect”, which turns the patent into a Unitary Patent. If you do not want a Unitary Patent, you can ignore this deadline and simply validate your European Patent in individual countries using the “classical” procedure.
- Q. Will I need to provide any translations to get a Unitary Patent?
A. Yes – but not many.
In line with the current system, you will still need to file your patent application in English, French or German, and provide translations of the claims into the other two languages before the patent can be granted.
If you request Unitary Effect, you will also need to provide a full translation of the patent into another language. If the application was examined in French or German the translation needs to be into English. If the application was examined in English, the translation can be into any other EU language. This translation does not need to be provided until the request for “Unitary Effect” is filed, which must be done within one month of the grant of the patent.
This is in contrast to the “classical” route, which can require even more translations to bring a granted European Patent into force in some countries.
Financial compensation for Unitary Patent translation costs will be available for EU-based SMEs, non-profit organisations, universities and public research organisations. Ask Dehns if you want to know more about the compensation scheme.
- Q. Will this be cheaper than the existing system?
A. Yes and no!
The EU and the EPO have based a lot of publicity on the idea that a Unitary Patent will be cheaper than the existing system. However, this is not necessarily true. While the Unitary Patent will cheaper than the existing system in some circumstances, it could also be more expensive, or even about the same. This all depends on the facts of any individual case, and particularly on which countries you want to protect your invention in. This will influence the annual renewal (maintenance) fees and the costs associated with any translations.
As a general rule, if you normally validate your European Patents in a large number of countries, a Unitary Patent will be cheaper whereas if you normally only validate your European Patents in a handful of countries the Unitary Patent may be more expensive.
Any comparisons between the costs for the Unitary Patent and the costs for the “classical” route will therefore need to be assessed on a case-by-case basis depending on the strategy which suits your needs best. Contact Dehns for advice on the cost implications for your own business.
- Q. What are the advantages of a Unitary Patent compared to a “classical” European patent?
A. The Unitary Patent offers a number of potential advantages for patent owners, such as:
- Protection for your invention in multiple countries with a single patent;
- The ability to enforce your rights through a single court (the Unified Patent Court) with a single judgment which is enforceable in all participating countries, with the potential for higher-speed (12-15 months overall, with only 1 day of oral hearings), lower-cost proceedings and improved legal certainty across Europe - for more details see our Q&A on the Unified Patent Court;
- Potential reductions in translation costs upon grant;
- Potential reductions in renewal fees after grant.
The Unitary Patent system also offers a number of potential advantages for third parties seeking to ensure they have freedom to operate across Europe, such as:
- The ability to obtain a single declaration of non-infringement, valid across Europe, from the Unified Patent Court;
- The possibility of revoking a Unitary Patent in a single set of legal proceedings, even after the EPO Opposition window has closed, instead of having to pursue separate litigation in different countries;
- Faster, potentially cheaper litigation with improved legal certainty across Europe.
- Q. Are there any disadvantages of the Unitary Patent?
A. There are some potential disadvantages for patent owners:
- Potential increases in translation/renewal costs – if you only need patent protection in, say, Britain, Germany and France, it will be cheaper to use the “classical” route;
- Loss of flexibility in managing your portfolio – as a single patent, the Unitary Patent cannot be “trimmed down” to a smaller group of countries to reduce renewal costs later in its life;
- Unitary Patents will be vulnerable to “one shot” revocation decisions – so if your patent’s validity is successfully challenged in the Unified Patent Court you will be left without patent protection in any of the Unified Patent countries;
- You cannot “opt out” of the jurisdiction of the Unified Patent Court.
There are also some potential risks for third parties: If you are a third party concerned about an infringement lawsuit, you should bear in mind that a Unitary Patent could allow the patent owner to obtain a single judgment against you which is enforceable in multiple countries rather than needing to pursue you in separate countries. You may therefore wish to consider pre-emptive filing of Oppositions at the EPO or revocation actions at the UPC, or seeking a declaration of non-infringement from the UPC.
The existence of Unitary Patents could also change the Freedom to Operate (FTO) landscape significantly. FTO searches are always strongly advisable before bringing a product to market or entering a new market and the advent of the UPC could make this even more critical for your business.
- Q. When will this all come into force?
A. At present this is uncertain following the UK’s vote to leave the European Union. The planned timetable of May 2017 seems likely to slip.
Before the new system can come into effect, 13 countries need to ratify the Agreement on a Unified Patent Court, and these must include France, Germany and the UK. UK ratification is now in doubt and so it is possible that the whole system could be delayed until “Brexit” negotiations are complete. This could take until at least 2019. However, the system could enter into force sooner than this if the UK ratifies the Agreement before leaving the EU, or if the treaty is amended to allow the remaining EU countries to go ahead before Brexit.
Dehns will keep this site updated with new developments.
- Q. Should I opt for a Unitary Patent or is the “classical” route better for me?
A. There is no “one size fits all” answer here. Any decision on whether to opt for Unitary Patent protection in participating countries or whether to use the established “classical” route instead will need to take into account your own business needs, budgetary constraints, and appetite for risk, bearing in mind the pros and cons which we have identified.
For detailed advice relating to your own particular circumstances, please contact any of the team here at Dehns, who are fully qualified to support your decision making process.
The information on this page is necessarily of a general nature and is given by way of guidance only. Specific legal advice should be sought on any particular matter. Dehns accepts no responsibility whatsoever for any action taken or not taken on the basis of the information contained herein.