What is the Unitary Patent?
The Unitary Patent is a unified system that makes it possible for any owner of a European Patent (EP) to obtain patent protection in up to 25 member states of the European Union by means of a single procedure, provided that the claims that have been granted are identical for all member states.
What is the process to benefit from the Unitary Patent system?
The process to obtain the Unitary Patent will start after the European Patent has been granted, which must have been processed and granted within the framework of the current EPC (European Patent Convention) as in the past.
Therefore, the entry into force of the Unitary Patent will not involve changes in the procedure prior to the granting of European Patent applications, but it is a post-grant system.
- Application for the unitary effect of the granted European Patent:
The EP patent filing, search, examination and granting processes will be the same as the current processes. To request the unitary effect of the granted EP, there will be a period of one month since the European Patent grant is published. (One month from “mention to grant” date).
The application for the unitary effect does not require the payment of additional official fees.
A translation of the claims into the two official languages other than the language of the procedure must be provided. However, since this procedure will be done during the pre-grant period of the patent application, it will not be necessary to provide the translation again.
In addition, a translation of the entire patent description in a DIFFERENT official EU language must be provided for EPs that have been processed in English. This translation, however, will only be required during the initial six-month transition period following the entry into force of the unitary patent.
- Opposition Procedure:
There are no changes compared to the current procedure and it can still be filed within the nine-month period from the mention of the grant, as established in the EPC.
Advantages of the Unitary Patent:
- It will prevent European Patent owners from having to independently validate their patent in each of the signatory states.
- Savings in renewal fees. The annual fees to be paid for European Patents with unitary effect will be paid in the EPO, preventing the payment of different renewal fees in each of the validation states. (As it is done until now)
- Translations are not required in all countries.
- Defense of rights in a Unified Patent Court. This results in improved legal certainty, preventing duplication of proceedings carried out in parallel in multiple member states and a significant reduction in procedural costs.
- Registration of licenses and transfers through a unified procedure.
Which countries are part of the Unitary Patent Agreement?
As of January 2022, there are 25 countries:
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.
Countries that are not part of the Unitary Patent Agreement:
Countries such as the United Kingdom, Spain or Croatia are not part of the UP agreement, so if the patent owner is interested in these countries, the patent must be validated independently in each country. However, owners from these non-signatory countries may also benefit from the UP system for countries that have ratified it.
When can I start applying for a unitary patent?
The Protocol to the Agreement on a Unified Patent Court on provisional application (PPA) entered into force on January 19, after Austria submitted its instrument of ratification. During this provisional application period, which is expected to last about eight months, the technical and infrastructure preparations for the Unified Patent Court will be completed so that it can start operating within the framework of the Unitary Patent system before the end of the year.
On the other hand, only from the moment Germany deposits its instrument of ratification (still pending), and before the entry into force of the Unitary Patent system, it will be possible to apply for two transitional measures available for those European Patent applications that have reached the final stage of the granting procedure (i.e. for which an intent to grant has already been issued):
First Transitional Measure: For those applications for which a communication of intent to grant has already been issued, it will be possible to request that the publication of the mention of grant be delayed so that such publication date is after the entry into force of the Unitary Patent.
Second Transitory Measure: For European Patent applications for which a communication of intent to grant has already been issued, an advance request for unitary effect will be allowed.