Unpacking the EU Patent Package: The Unitary Patent
Author: Paul Roscoe
Editor: Leythem A. Wall
The Unitary Patent System (UPS) and the Unified Patent Court (UPC) are on the horizon. Expected to come into force in 2017, this will be the biggest change for 40 years in European patent practice and will directly affect all current and future European patents and applications.
The European Patent Office (EPO) is responsible for the examination and grant of ‘classical’ European patents under the European Patent Convention (EPC). A classical European patent acts as a ‘bundle’ of national patents, which are locally enforceable by the Courts of a contracting state, subject to validation in that state.
The UPS creates a European patent with unitary effect (UP), a single European patent right, covering up to 26 European Union (EU) member states. Like today, a European patent application will be examined and granted by the EPO. Within one month following grant, a patentee may opt for a UP or a classical European patent. For a UP there are no further validation steps. In contrast, a classical European patent must typically be validated in desired national states within three months. From the same European patent application, it will also be possible to obtain both a UP and a classical European patent to cover any non-UPS (e.g. Spain, Croatia) and non-EU (e.g. Norway, Switzerland, Turkey) member states not covered by the UP on the date of grant.
As well as geography, costs are a major factor for considering whether to opt for a UP or proceed with a classical European patent. Renewal fees for a UP will be equivalent to the total renewal fees for four member states (‘true top four’). Further, in contrast to classical European patents, there is no validation fee payable for a UP. However, unlike classical European patents you cannot drop individual national designations from the UP to save on renewal costs, the UP lives and dies as one.
Translation costs and requirements will also be less burdensome for a UP than a classical European patent. During a transitional period of maximum twelve years, a UP granted in English (one of the EPO official languages) will require translation into one other language of an EU member state, not necessarily French or German (the other two EPO official languages). Similarly, a UP in French or German will require translation into English. There will be no translation requirements after expiry of the transitional period.
Overall, with fewer fees and formalities, the Unitary Patent potentially offers a significant reduction in costs, depending on how many EU states you pursue protection and for how long.
The UP can still be subject to an EPO opposition filed within nine months of grant, but cannot be enforced or challenged in national courts. Rather, it will come under the exclusive jurisdiction of the UPC, the focus of our next blog post. For further information in the meantime, please see Finnegan UPS and UPC.
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