Patent Law – The European Patent with unitary effect (‘Unitary Patent’) (02/2013)

Executive Summary?

A ‘Unitary Patent’ is expected to be available from 2014 on, by means of which a patent with unitary effect in all of the 24 participating EU states will be granted with only one request and without further validating the European patent in any one of the desired participating states. Only one unitary renewal fee is to be paid for keeping alive the patent in all of the said participating states. Translation costs will be reduced to a minimum by use of “high-quality machine translations” being available within the next few years.

What is the ‘Unitary Patent’?

The ‘Unitary Patent’ will be a European Patent granted by the European Patent Office (EPO), under the provisions of the European Patent Convention (EPC) as commonly known, to which unitary effect for the territory of the 24 participating states is given after grant, at the patentee’s request. The 24 participating member states are all European Union (EU) members except for Spain (due to language reasons), Bulgaria (due to domestic administrative matters; signature is expected soon), and Poland (due to economical reasons); these member states can nevertheless still accede to the agreement at a later date. On February 19, 2013 the Agreement on a Unified Patent Court (UPC) was signed by the participating states. The process of ratification by national parliaments started following the signing of the UPC agreement. The ‘Unitary Patent’ will enter into force on January 1, 2014, or once 13 countries have ratified it including France, Germany and the United Kingdom, whichever is the later.
The ‘Unitary Patent’ thus provides an additional option for patentees besides already existing national patents and ‘classical’ European patents with validation in desired EPC member states. The EPO will take on a number of additional tasks such as administering patentees’ requests for unitary effect and collecting, administering and remitting the unitary renewal fees for ‘Unitary Patents’. A specialized patent court, i.e. the UPC, will be created with exclusive jurisdiction in respect of civil litigation related to infringement and validity for both the ‘classical’ European patents and ‘Unitary Patents’. During a transitional period of seven years, actions concerning ‘classical’ European patents can still be brought before the national court if those patents have been opted out before an action has been brought before the UPC.

How to get a ‘Unitary Patent’

Within one month of the date on which the grant of the European patent has become effective, the patentee can request the EPO to register the unitary effect in the European Patent Register resulting in the patent taking effect retroactively from the mention of the grant in the 24 participating member states without additional validation requirements. The request is to be filed in the language of the proceedings. In addition to the ‘Unitary Patent’, the patentee may still validate the EP patent in one or more of the other EPO member states.
For a transitional period of a maximum of 12 years or until so-called “high-quality machine translations” into all official languages of the EU are made available (by the end of 2014 the service is expected to cover 32 languages including all languages of the EU), European patents with unitary effect that were granted in German or French will need to be translated into English and the ones granted in English will need to be translated into another official language of the EU. Thereafter, human translations are only required in case of a legal dispute and upon request of a court or the presumed patent infringer.


Is the ‘Unitary Patent’ more economic than the ‘classical’ European patent?

The ’Unitary Patent’ is said to be more cost-effective than validating the ‘classical’ European Patent in all of the participating 24 member states. However, a ‘classical’ European patent is usually only validated in a particular and limited number of states such as, e.g., Germany (DE), France (FR), Great Britain (GB), Spain (ES) and Italy (IT). As Spain is not yet one of the participating member states of the ‘Unitary Patent’, a translation of the whole European patent into Spanish would be required anyway. Due to the London Agreement, no further translations are necessary when validating, for instance, DE, FR and GB by way of a ‘classical’ European patent while, for instance, Spanish or Italian translations are still needed when validating the ‘classical’ European Patent in Spain or Italy. To summarize, it thus at least depends on the particular states in which the patentee desires to validate the European patent as well as the number of desired states as to whether the costs for validating a ‘classical’ European patent in the desired states or the costs for a ‘Unitary Patent’ also covering the desired states are favourable, i.e. lower. For the time being, at least one full text translation into a language other than the language of the proceedings is needed when requesting a ‘Unitary Patent’.
Moreover, the renewal fees for a ‘Unitary Patent’ have not yet been fixed but will probably be higher than the respective national renewal fees of the corresponding EU member states when validating a ‘classical’ European patent in said state. On the other hand, only the payment of a single renewal fee has to be monitored and thus part of the higher renewal fee for a ‘Unitary Patent’ could be compensated by lower service fees.