Whether or not obtaining grant of a unitary patent is appropriate will need to be judged on a case by case basis, but the following factors are all potentially relevant:
- Where does the applicant (or applicants if there are more than one) wish to obtain patent protection?
- Validation and renewal costs
- Will jurisdiction of the UPC be a potential problem?
- Loss of flexibility in managing the patent portfolio over the life of patent
Prerequisites for obtaining a UP
A UP can only be obtained based on a granted European patent (and the grant date must be on or after 1 June 2023, when the UPC opened).
The European patent must grant with the same set of claims for all the following EU member states: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia Slovenia and Sweden.
A UP will not be available if one of the above designations is withdrawn from the European patent prior to grant, or if there is a different set of claims for any of the above EU states.
These conditions apply regardless of whether or not the EU state has deposited its ratification of the UP patent package at the time of requesting the UP.
Where is patent protection required?
Initially, a UP will cover at least Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
The following further countries have the option of ratifying: Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia.
The exact coverage of any UP will depend on the countries which have ratified on the date of registration of unitary effect by the EPO. If further countries deposit their ratification after the date of registration, this will not change the territorial scope of the granted UP.
Countries a UP will not cover
Protection in countries not covered by a UP will need to be obtained in the current manner via national validation and subsequent payment of national renewal fees.
EU member states potentially not covered (at least initially): Cyprus, Czech Republic, Greece, Hungary, Ireland, Romania, and Slovakia.
EU member states definitely not covered: Spain, Poland, and Croatia (Croatia may sign up in the future).
EPC states that are not EU member states: Albania, Iceland, Monaco, North Macedonia, Norway, San Marino, Serbia, Switzerland, Turkey and the United Kingdom.
Validation and extension states: Bosnia & Herzegovina, Montenegro, Cambodia, Morocco, Moldova and Tunisia.
To obtain a UP during the at least the first 6 years of operation of the system, a translation must be filed at the EPO. If the patent is granted in English, the translation can be into any official language of any EU member state. If the patent is granted in French or German, the translation must be into English.
If a translation of the complete granted patent is already being prepared for validation in Spain or Poland, or another EU member state not initially covered by the UP (e.g. Greece), this can be used (where the European patent is granted in English). Otherwise, there will be some costs associated with obtaining a suitable translation. These will however be significantly lower than the costs of obtaining the necessary translations to validate in all the UP states separately.
There is also a compensation scheme to cover the costs of translating the application for the purposes of requesting a UP for SMEs, natural persons, non-profit organisations, universities and public research organisations. To be eligible, these entities:
– must have their residence or principal place of business in an EU member state;
– must have filed the European patent application or Euro-PCT application leading to the Unitary Patent in an official EU language other than English, French or German.
Compensation is set at EUR 500.
The cost of renewing a UP over its lifetime is roughly equivalent to the cost of renewing 4 European patent national patents over the same period. However, there is no option of dropping some countries later from a UP in order to save renewal fees.
If protection is only required in 2 or 3 EU states, renewal fees are likely to be lower if the classical route is followed and the European patent validated nationally. Conversely, it will be significantly cheaper to maintain a UP for its maximum term than to maintain 17 or more national patents in the same countries for the same term.
If flexibility to drop patents in some countries to save renewal fees in future is important, validation via the classical route may be preferable.
Administration of renewal fee payments will be simplified as there will be only one annual payment rather than 17 or more to monitor.
A UP cannot be opted out from the jurisdiction of the UPC. It will therefore be potentially vulnerable to central revocation for all the states it covers. For very important patents, applicants may prefer not to take the risk of central revocation even if a UP would be the more cost-effective option.
Another potential lack of flexibility arises from the fact that a UP can only be assigned as a whole (although it is possible to issues a licence under a UP for only some of the participating member states).
Any change of ownership can however be recorded centrally at the EPO, rather than having to be recorded separately in respect of each national validation. The same is true for recordal of a licence under a UP.