After decades of discussions in the European Community and then in the European Union regarding the creation of a "Community patent" a new form has seen the light of day: the Unitary Patent (EP patent having unitary effect). It is subject to two regulations and the Agreement on a Unified Patent Court, which is to be ratified nationally by at least 13 member states. The EU states Austria, Belgium, Denmark, France, Luxembourg, Malta, and Sweden have already ratified the Agreement on UPC.
The EU Unitary Patent – a completely new system for patent protection? Think again. There is no change to the granting procedure for turning a European patent application into a European patent, cf. Art. 2 EPC (European Patent Convention).
After publication of the granting of a European patent, the proprietor has one month to submit a request to the European Patent Office for his European patent to receive a unitary effect for the participating states.
The unitary effect extends to the EU countries except for – insofar as can be currently anticipated – Spain, Croatia, and Poland.
If the patent proprietor does not request the unitary effect, the patent remains a conventional European patent in accordance with the EPC which is validated in the desired states in the usual manner, cf. Art. 65 EPC. This regulation also remains applicable for non-EU states (e. g. CH, TR and NO).
The European Patent Office is responsible for dealing with the requests, annual fees and the register for the Unitary Patent.
Regarding the annuity fees the EPO's "True Top 4" proposal has been permitted by the Administrative Council in the end of June 2015. This "True Top 4" proposal covers the territory of 25 EU member states and corresponds to the sum of the renewal fees currently paid for the four most frequently validated countries by the holders of European patents (Germany, France, UK and the Netherlands). The total sum for 20 years will amount to ca. EUR 35.000.
A comparison of the present annuity fees with the upcoming annuities as UP Top 4 yields the following result ...
The graphic shows the steeper rise as of year 10. In comparison with the EPO's present pre-grant annuities, the UP annuity fee is higher than the annuity fee for an EP application from the 12th year onwards. When the European patent is granted in year 7, the annuity fee for the 8th year decreases from EUR 1.155 (EP – 7th year) to EUR 815 (UP – 8th year). From the 12th year onwards there is a leap upwards to the next annuity fee, e. g. from EUR 1.560 (EP) in the 11th year to EUR 1.775 (UP) in the 12th year.
We assume that the EPO, when calculating the proposal "true top 4", has used the national fees as valid in January 2015 and also the exchange rate GBP/EUR of a date in January 2015. The calculated fees were probably rounded up or down to amounts ending with 5 or 0. Apparently, a revision of the annuity fees is possible after four years.
As the name suggests, the Unitary Patent is unitary in its existence and its enforcement. It can be limited, transferred or declared invalid - or even infringed upon - only with effect for all states. However, licences can be limited by territory.
An advantage of the Unitary Patent is that there are no translation requirements after the patent is granted; in the event of litigation proceedings, the alleged infringer or the competent court can demand a full completely human translation. Machine translations of European patents into all official languages of the member states of the EPC are available (Patent Translate). However, for the time being there is a transition phase (which can last up to twelve years), during which a translation of the patent document into English or, if English is the language of the proceedings, another official language of the EU, has to be filed and must be done so within the time period allowed for requesting the unitary effect of the European patent.
A Unified Patent Court (UPC) will be established.
The central board (central divison) of the court of first instance based in Paris has two offices (sub-divisions) in London and Munich; the Court of Appeal is based in Luxembourg. The Unified Patent Court is exclusively competent in disputes relating to Unitary Patents and European patents (only for EU countries), even European patents which were granted before the Agreement on a Unified Patent Court come into force.
For a European patent which does not have a unitary effect the holder has the option - so long as it is not pending at the Unified Patent Court - to choose the national court instead of the Unified Patent Court (Opt-Out). This opt-out-declaration may be withdrawn (Opt-In). There will be time limits for the Opt-Out and Opt-In options (currently scheduled to be seven years but this time period may be extended).
Last updated: July 20, 2015