Frequently Asked Questions for the Unitary Patent (UP)

A Unitary Patent (UP) is a single patent that will cover all those EU Member States that have agreed to participate (referred to as “UP Member States”). Thus, a UP will provide uniform protection in all UP Member States.

The UP may alternatively be referred to as a European patent with unitary effect.

The UP system will start on 1 June 2023.

There are 22 EPC states (including ten EU Member States) that are not UP Member States, including the UK.

There are 8 EU Member States that will not be UP Member States when the UP system starts, but which may decide to participate later, these are:

Croatia, Czech Republic, Cyprus, Greece, Hungary, Ireland, Romania and Slovakia.

The remaining 2 EU Member States, Spain and Poland, do not intend to participate in the UP system.

There are also 12 non-EU states that are contracting states of the EPC which cannot participate in the UP system, these are:

Iceland, Norway, Turkey, Switzerland, Liechtenstein, San Marino, Monaco, Serbia, Albania, North Macedonia, Montenegro and the UK.

You will apply for a UP in the same way as you do now for a European patent, with a single European patent application at the European Patent Office (EPO). This European patent application will result in the grant of a European patent as it does now. The only change will come after grant of the European patent.

Currently, after grant, patent owners must choose where in Europe protection is required, from among the 39 contracting EPC states. A UP will be requested at the EPO via a similar process as the current national validation route.

A request for a UP must be filed within one month of grant (compared to the three months from grant deadline for most national validations). The request will be made by filing the necessary form at the EPO, and must be filed by or on behalf of the patent proprietor(s). If the one month deadline is missed, there is an opportunity to request re-establishment of rights within two months of expiry of the one month period.

During a transitional period of six years (which may be extended up to a maximum of twelve years), it will also be necessary to file a translation of the European patent with the request for a UP. If the patent is in English, then it will be necessary to file a translation into any other official language of the EU. This includes EU countries that are not UP member states, such that a Spanish translation may be filed for example, if already available. We can advise on the best translation to file on a case by case basis, and can obtain any necessary translations for you.

The translation is for information purposes only and will not have any legal effect. It is currently advised not to file a machine translation, but this may change in future.

No, once the UP system has begun it will still be possible to request separate national validations of European patents in one or more of the EPC contracting states. Thus, there will be two routes to obtaining protection in EPC states:

1)  The “classical” national validation route which involves separately requesting validation in one or more of the 39 contracting states.

2)  The new UP route which involves a single request to cover all UP Member States combined with national validations in any of the other EPC states.

The option to file national patent applications in EPC member states will also remain.

Even if a UP is requested, national validations will be required for those states that are not UP Member States. For example, you may wish to request both a UP (to cover the UP Member States) and validate nationally in the UK (or other states that are not UP Member States).However, it will not be possible to request both a UP and a national validation in a UP Member State.

Renewal fees for a UP are paid to the EPO annually after grant. A single renewal fee is payable for a UP. It is not possible to reduce this fee for example by abandoning one or more of the UP member States. Once you have requested a UP then you must either maintain or abandon the UP in all states.

The rules for paying a renewal fee on a UP are the same as those for a European patent application. The fee can be paid from three months before the renewal fee due date, and there is a six-month grace period for paying an overdue renewal fee. If you decide to request a UP, then your renewal fee provider will monitor the payment date for you in the usual manner.

The renewal fee for a UP is based on the total cost of renewal fees for the top four UP states, namely Germany, France, Italy and the Netherlands. The renewal fee costs for a UP will be significantly cheaper than renewing separately in all UP Member States. However, if you typically only validate and renew in two or three EPC member states then the renewal fee costs for a UP will be more expensive. You will also need to pay renewal fees on any national validations, such as in the UK.

We will provide example renewal fee costs when you need to make decisions on validations.

Yes. If you amend the claims of your European patent application differently for different EPC contracting states (for example based on national prior art) you may not be able to obtain a UP. Also, if you withdraw a designation then you may not be able to obtain a UP.  The situations in which such circumstance could arise are unusual and often complex, so your usual attorney will discuss this with you if necessary.

The EPO will set up and maintain a new Register for Unitary Patent Protection as an integral but special part of the existing European Patent Register.

The Register for Unitary Patent Protection will list the participating Member States covered by a given UP. It will also contain entries relating to transfer, licences, lapse, limitation or revocation of UPs.

Any transfers of UPs will be recorded at the EPO on the Register for Unitary Patent Protection. The recordal of a transfer of a UP will follow the same rules as for a European patent application. The central recordal of a transfer at the EPO for a UP will be more cost and time efficient than separate recordals at national Patent Offices as is currently required for nationally validated European patents. It will however still be necessary to record transfers for any additional nationally validated European patents in non-UP Member States at national Patent Offices.

Yes. The EPO opposition procedure applies to a European patent for which a UP is requested in the same way as for any other nationally validated European patent.

In addition to the EPO opposition procedure, revocation actions against a UP will be possible and will be handled exclusively by a new European court, the Unified Patent Court (UPC), rather than by national courts. A decision by the UPC to revoke a UP will apply to all UP Member States (i.e. by means of a single action).

The UPC will also handle actions relating to the infringement of a UP (as well as for national validations in UPC Member States unless opted out). Thus, the UPC will offer a new, centralised procedure for infringement and validity actions, i.e., where the court can consider the actions for all at one time. This could be less costly than taking separate actions in multiple states, but also runs the risk of revocation of the patent for all UP Member States through a single action. For more information on the UPC see our separate FAQ sheet about the Unified Patent Court.

Yes. If your European patent grants after 1 June 2023, then you will be able to file a request for a UP at the EPO within one month of grant in the usual way.

If you have obtained a notice of allowance of your European patent application (i.e. a communication under Rule 71(3) EPC) ,then from 1 January 2023 you can file a request to delay grant until the date on which the UP system starts. In order to file a request to delay grant, the Rule 71(3) EPC communication must have issued but the applicant must not yet have approved the text for grant.

The request to delay grant will be made by filing a form at the EPO. There is no official fee for filing a request to delay grant, but a service charge will be payable to us for the work we undertake on your behalf.

For more information on delaying grant please click here. 

In order to obtain a UP as soon as possible once the UP system commences (provided all corresponding requirements are met), an early request for a UP can be filed from 1 January 2023. In order to file a file an early request for a UP, the Rule 71(3) EPC communication must have issued.

Early requests for a UP will only be available until the start date of the UP system.