Manual how to get Unitary Patent
Applying for a Unitary
What is the European patent with unitary effect?
The European Patent with unitary effect (Unitary Patent) – will be a European patent (with the same set of claims in respect of all the participating member states) granted by the European Patent Office, but for which, on the request of the applicant, unitary effect is given for the territory of the 25 participating European Union (EU) member states, rather than becoming a bundle of national patents like the classical European Patent. The Unitary Patent will have a unitary character- it will provide uniform protection and will have equal effect in all participating member states. However, European patents granted with different sets of claims for different participating member states will not benefit from the unitary effect.
A Unitary Patent may only be limited, transferred, revoked or lapsed in respect of all participating member states together. A Unitary Patent may be licensed in respect of all or some of the member states.
A Unitary Patent will be a more effective and less expensive way to obtain patent protection for an invention if the applicant is seeking protection in at least 5-6 participating European Union member states.
Unitary Patent package and its entry into force
The Unitary Patent will be achieved by two separate regulations and one agreement; together these three separate pieces of legislation will form the Unitary Patent package. The Unitary Patent is the first piece of the Unitary Patent package. It will be established by two Regulations (Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of Unitary Patent protection and Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of Unitary Patent protection with regard to the applicable translation arrangements) which entered into force on 20 January 2013 and which will be applicable from 1 January 2014 or the date of the entry into force of the Agreement on a Unified Patent Court, whichever is later. Agreement on the Unified Patent Court – which is the second piece of the Unitary Patent package –was signed on 19 February 2013 and will enter in force on 1 January 2014 or the first day of the fourth month after 13 contracting states, including France, Germany and the United Kingdom ratify it.
It is important to mention, that when the Unitary Patent package enters into force, the Unitary Patent will only have effect in the participating member states which have ratified the Agreement on the Unified Patent Court. Even after the Unitary Patent package enters into force, it may be necessary to validate European patents and pay annuities for the member states participating in enhanced cooperation which have not yet ratified the Agreement.
The territories where the Unitary Patent will have effect in:The Unitary Patent will have effect within the territories of 25 EU Member States
Italy (IT) and Spain (ES) intend not to participate in the Unitary Patent protection (however Italy has signed the Unified Court Agreement).
The creation of the Unitary Patent system will not affect European patents in other EPC Contracting States. In said other states (see the table “Non-EU states of the current European patent system”), after a European patent is granted, it will have to be independently validated to those states and annuity fees must be paid.Non-EU states of the current European patent system are unable to participate in the Unitary Patent system
|Country Code||Member state|
|BS||Bosnia & Herzegovina – state recognizing European patents upon request.|
|ME||Montenegro- state recognizing European patents upon request.|
Advantages of Unitary Patent system
- Upon being granted by the EPO, a Unitary Patent will automatically be valid for all participating EU states.
- The new patent system will be comprised of the Unitary Patent and a single jurisdiction, avoiding multiple court cases on the same patent in different countries.
- The official fees for validation of a Unitary Patent will be approximately 80% less than the fees for validating a European patent in all member states of the EU. The official fee for renewal of the Unitary Patent is expected to equal the cost of renewal in 5 or 6 EU member states.
- Easy maintenance of a Unitary patent by paying all annuities to EPO. The patent proprietor should benefit from a reduction of the renewal fees if he files a statement at the EPO stating that he is prepared to grant a licence in return for appropriate consideration
- According to the European Commission, a Unitary Patent may cost just 4,725 Eur compared to an average of 36,000 Eur needed today.
- No further translations will be required beyond those required by the EPO before grant. Transitional provisions, however, will apply until high quality machine translations are available.
How to apply for a Unitary Patent?
The application and examination procedure for Unitary Patents will be the same as for European patents until after the patent has been granted. The difference between the Unitary patent and the existing European patent will be in the post-grant phase. Once the Unitary Patent package enters into effect, an applicant will have three options for applying to the EPO: a) the Unitary Patent, b) a traditional European patent or c) the patent owner can also combine both schemes and request a Unitary Patent and a European patent for any country not covered by the Unitary Patent.
If the applicant wishes to obtain a Unitary patent, a request for unitary effect must be filed with the EPO within one month of the date of the publication of the mention of the grant in the European Patent Bulletin.
Unitary patent protection may be requested for any European patent granted after the date the Regulation (EU) No 1257/2012 comes into force.
The request for unitary effect shall be submitted in the language of the proceedings before the EPO together with the translation prescribed, during a transitional period, by Regulation (EU) No 1260/2012. In the future, after the grant of the European Patent, there will be no translation requirement for unitary patents once the transitional period has expired.
Transitional period and translation arrangements
According to existing EPO procedures, applications for European patent can be filed at the EPO in any language. However, the official languages of the EPO are English, French and German. If the application is not filed in one of these languages, a translation in English, French or German has to be submitted within 2 months. The language in which the application is filed or translated is the language of the proceedings before the EPO. Before grant, the claims must be translated into any two of these three languages. Once the grant is published, the patent has to be validated in each of the designated countries. This validation step consists of the filing of the translated claims or the translation of the full specification into an official language of that state with the national patent office and the payment of a fee.
After the grant of the European patent, there will be no further translations required for a Unitary patent (except the translation requirements as for regular European patents before grant). However, during the transitional period (of up to 12 years), before a system of high quality machine translations into all official languages of the Union becomes available, a request for Unitary patent must be accompanied by a full translation of the specification of the patent into English where the language of the proceedings before the EPO is French or German, or into an official language of a EU member state, where the language of the proceedings before the EPO is English. The translation which will be filed with the request for unitary effect will have no legal value and will be provided only for information purposes.
A compensation scheme to reduce translation costs will be available for EU-based small and medium-sized enterprises, natural persons, non-profit organizations, universities and public research organizations having their residence or principal place of business within a Member State of the EU. Where such applicants file applications in an official language of the EU other than English, French or German, the costs of translating the application will be reimbursed.
There will be no changes to the cost of procedures up to and including grant of a European Patent, which is then to be registered with Unitary Effect and become the Unitary Patent. Greater changes of cost should be after the grant procedure. To secure and maintain the Unitary Patent it will be necessary to file a request and a translation of the European patent at the EPO and pay annual renewal fees. It is not yet confirmed whether there will be a fee for the request.
According to European Commission calculations the official fees for validation of the Unitary Patent will be about 80% less than fees for validating the European Patent in all member states of the EU. The EPO will collect annual renewal fees for the Unitary patents.
The fees have yet to be set, but the official fee for renewal of Unitary Patent may equal the cost of renewal in 5 or 6 EU Member States. Furthermore, a reduction of renewal fees will be available for patent owners who file a statement with the EPO stating that they are prepared to grant a licence in return for appropriate consideration.
When the new Unitary Patent System is available, according to the European Commission, a Unitary Patent may cost just 4,725 Eur compared to an average of 36,000 Eur needed today.
A Unified Patent Court in short
A Unified Patent Court (UPC) will have jurisdiction for disputes (due to infringement, revocation, declaration of non-infringement, etc) relating to the Unitary Patents as well as relating to non-unitary patents (traditional European patents), which are currently granted by the EPO. Rulings by the UPC with respect to the traditional European patents will only apply in participating member EU states. The unified Patent Court also will have jurisdiction for supplementary protection certificates issued for a product protected by a patent.
The UPC will comprise a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will consist of a central division (with a seat in Paris and two sections in London and Munich) and by several local (for a single contracting state) and regional divisions (for two or more contracting states) in the Member States to the Agreement. The London section will handle cases related to the pharmaceutical industry and life sciences, whereas the Munich section will deal with cases related to mechanical engineering, lighting and thermal engineering. As for an office of a Court of Appeals, it will be positioned in Luxembourg.
In the event of a dispute concerning the Unitary Patents, it will be a legitimate requirement that the patent owner, at the request of the alleged infringer, should provide a full translation of the patent into an official language of either the participating Member State in which the alleged infringement took place or the Member State in which the alleged infringer is domiciled. The patent owner should also be required to provide, at the request of a court competent in the participating Member States for disputes concerning the Unitary patent, a full translation of the patent in the language of the proceedings before the Court. Such translations must be provided at the expense of the patent owner.