The Unitary Patent (UP) and the Unified Patent Court (UPC) will commence on 1 June 2023, when the UPC Agreement (UPCA) is planned to enter into force.

Our first article introduced the Unified Patent Court (UPC) and highlighted the most urgent decision for patent proprietors regarding whether to opt out existing granted European patents from the jurisdiction of the UPC.

The Unitary Patent (UP)

The UP will, for the first time, offer patent proprietors the option to have a single patent covering multiple EU member states (17 at the time of writing, likely to be more in the future). As an alternative, the current “classical” validation route in different states will continue.

Patent proprietors will need to decide:

• should we request a UP based on a granted EP?

Some key features of the UP are:

• provides protection in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden (at the time of writing).
• requires payment of a single renewal fee
• must meet new translation requirements
• falls under the jurisdiction of the UPC
• requires limitation, transfer, revocation or lapse in all UP member states

Is a Unitary Patent an option?

To file a request for a UP, the EP patent must:

• have the same claims for each UP member state; and
• have and retain designations for all UP member states (no designations withdrawn)

Requirements and timing of Unitary Patent request

A request for a UP must be filed within one month of the date of grant of an EP patent.  There will not be an associated official fee.

During a transition period, the patent proprietor will be required to file appropriate translations.  For example if the patent is in English, a translation into any other EU language will be required.

For currently pending EP patent applications where a UP is desired upon grant, there are ways to delay grant in order to keep the option of a UP open.

Should I request a Unitary Patent?

There are various factors to consider when deciding whether to request a UP and different decisions may be appropriate for different patents in your portfolio.  Some indicative questions are:

• would you like wide country coverage? (such as 4+ of the member states on offer in the UP)
• would the costs associated with the UP route be lower than proceeding with “classical” validations in the member states of interest?
• are you unlikely to want to ‘prune’ the patent family by reducing UP member states to reduce renewal fees during the life of the patent?
• is it unlikely that you would want to transfer the patent in individual UP member states?
• are you comfortable with any risk associated with jurisdiction under the UPC and the possibility of central revocation of your patent by a third party?

If most of your answers are yes, then requesting UP may be the best option. However, please discuss your portfolio with us before making a final decision.