Unitary patent (UP) and the Unified Patent Court (UPC)

Unitary patent (UP) and the Unified Patent Court (UPC)

After years of negotiation, the majority of European Union (EU) countries recently came to an agreement that will lead to a new unitary patent system. The new system will introduce the “European patent with unitary effect” or, simply, unitary patent. The Unitary Patent will be effective in 25 EU states.

A new Unified Patent Court will be established and designed as a single court system for the 25 participating EU states. It will have exclusive jurisdiction over Unitary Patents and, after a transitional period of seven years, it will also cover conventional European patents. Thus the enforcement and nullity actions will be brought before this Court.

The new unitary system (patents and Court) will need to be taken into consideration in order to frame the most appropriate strategies in intellectual property management for applicants both in Italy and in Europe. To learn more on the unitary patent and the Unified Patent Court, please refer to our dedicated pages that may be selected from the menu on your left or follow the links above.

Unitary patent: European patent with unitary effect (EPUE)

The unitary patent is a European patent granted by the European Patent Office (EPO) having unitary effect in those 25 states of the European Union participating in the new system. See the list of participating states here.

Upon grant, conventional European patents generate a bundle of national patents in those jurisdictions where the patent owner chooses to proceed with validating the patent. To do so the patent owner should file the patent translation into national languages of the states selected for validation and elect an address of service, if required. National patents generated by the European patent are bound by respective national law orders. Therefore, enforcement and litigation should be brought in different jurisdictions and may have different outcomes for different states.

No validation is required for a unitary patent. A unitary patent will be automatically valid across all territories of the states participating in the new system. If a patent protection is sought in other European Patent Convention (EPC) states not participating in the new system, the validations must still be carried out.(38 EPC states – 25 Unitary Patent Agreement states =13 non participating states in the new system).

European patentUnitary patent
Filing and grantingEuropean Patent Office EPOEuropean Patent Office EPO
Covered jurisdictions38 states, all the 28 EU states + 1025 states, all the EU states except Spain, Croatia and Poland
Legal structureUpon validating the European patent in selected states, the European patent becomes a bundle of national patents, each of which is bound to the respective national law. It’s possibile to abandon any of the national patents without affecting the other ones.A single patent with unitary effect over all the 25 jurisdictions. No possibility to drop off jurisdictions.
Language regimeTranslations into some national languages needed. Necessity to select an address of service in every jurisdiction.Translation in one of the EU languages. No need to have an address of service in each jurisdiction.
AnnuitiesThe renewal fees are paid annually to the competnet national patent office. A single renewal fee per year, to be paid to the EPO for all the 25 jurisdictions covered by the Unitary Patent.
Patent life20 years20 years

Administration of a unitary patent

The procedure before the European Patent Office, from filing of the application and up to its grant, will be the same for unitary patents and conventional European patents.

Immediately upon grant, if the unitary effect is desired, a request must be filed within one month from the public announcement of the grant of the patent, in the European Patent Bulletin.

Language regime

Up to the patent grant, the language regime remains the same as for the actual European patent applications: patent applications are to be filed with the EPO in either English, French or German.

On grant, unitary patents in French or German shall be translated in English; unitary patents in English would require a translation in another official language of the European Union. A compensation scheme for applicants resident in a participating state with a different official language will probably be established.

Can an existing European patent join the unitary patent system?

Upon request of the proprietor, an existing European patent could get a unitary effect if it has been granted with the same set of claims for all the 25 states participating in the unitary package. In such cases, the existing European patents would also fall under the jurisdiction of the Unified Patent Court, providing there is no litigation pending before national courts.

Unified patent court’s jurisdiction

The newly established Unified Patent Court will have exclusive competence over unitary patents, conventional European patents and supplementary protection certificates (SPCs) in those territories of the 25 member states of the EU participating in the new patent system.

The proprietor of a European patent application can opt-out their assets of the exclusive competence of the Unified Patent Court by, at the latest, one month before the expiry of the transitional period.

When the UPC will enter in force?

In order for the UPC to come into effect, the UPC Agreement must be ratified by at least 13 member states among the 25 participating in the new system. UK, Germany and France are the three mandatory states that must ratify the agreement in order for the system to function. The headquarters of the UPC are expected to be located in these three countries.

Recently, a declaration of intent to ratify was made by the UK, despite BREXIT plans.

Unitary patent renewals

A “True Top 4” approach was taken as a base to estimate the annuities due to maintain a unitary patent for life: the renewal fee for a unitary patent will be equal to the renewals of the four most frequently validated countries participating in the unitary patent (UK, Germany, France, the Netherlands).