25 May 2022
The unitary patent system will come into force in the coming months, but there are still many doubts about how it exactly works, about how to apply for it, as well as about the factors that must be taken into account to decide when this new unitary patent should be requested instead of the validation of the conventional European patent. In this article we will try to resolve all these doubts in a clear and detailed manner.
What is the unitary patent?
The European patent with unitary effect (also called unitary patent) was born as a mechanism to unify and simplify patent protection in the countries of the European Union (EU). It is unitary in several senses because it is a single patent which is prosecuted by only one patent office, in only one language and paying only one annuity. And it will provide protection in all participating countries.
It is one of the essential parts of the unitary patent protection (UPP) system, the other part of this system being the Unified Patent Court (UPC), which is a court with exclusive competence in patent matters (infringement, invalidity etc.) for European patents and European patents with unitary effect. Its judgments will have effect in all participating countries or, in other words, its jurisdiction covers all participating countries.
Which countries are covered by the unitary patent?
The first thing to say is that, unlike the European Patent Office (EPO) which is neither legally nor institutionally dependent on the EU, this UPP system is indeed linked to the EU. It does not cover all European countries but only countries of the European Union. Countries such as Switzerland, Norway or Turkey (which are outside the EU, but within the EPO convention) are therefore not part of it, nor is the United Kingdom, which initially promoted the project, but ceased to be part of it when it left the EU.
Moreover, the system has never really covered all EU countries, as, for various reasons, Spain, Poland and Croatia want to stay out of the system for the time being. The rest of the EU countries (24) have shown their intention to join, but many of them have not taken all the necessary legal steps to do so. Actually, only 16 countries have ratified and deposited the necessary legal instruments to join the system (Austria, Belgium, Bulgaria, Denmark, France, Sweden, Malta, Luxembourg, Portugal, Finland, Netherlands, Italy, Estonia, Lithuania, Latvia and Slovenia) and Germany is about to do so; however, there are some countries out of those 24, such as Hungary or the Czech Republic, which, for legislative or governmental reasons, do not seem to be joining in the short or medium term.
This is why the unitary patent is far from being a patent covering the whole Europe. The fact that high populated countries as Spain and Poland have been left out of the UPP system is already a disadvantage, which has been aggravated by the UK’s exit from the EU and thus from the unitary patent. In other words, the fact that important countries in Europe do not participate in this unitary patent and, therefore, national patents (directly or by validation of a normal European patent) have to be filed for these countries, has taken power and incentive away from the unitary patent; however, it can still be an interesting tool for patent applicants in Europe, depending above all on which states they are interested in protecting their inventions.
When will it come into force?
At the moment, the entry into force depends on Germany as it is the only country of the essential countries (France, Italy and Germany) that remains to deposit the instrument of ratification of the UPC agreement. Specifically, the system will enter into force on the first day of the fourth month after Germany deposits the instrument of ratification (i.e. if Germany deposits it on 20 October 2022, the system would automatically enter into force on 1 February 2023).
Germany has it ready and could deposit it at any time. However, the complexity of setting up such a system is very high, as it involves not only the creation of numerous IT tools and the training of many administrative staff, but also the establishment of several entirely new courts with the legal and logistical framework that this entails. For this reason it is assumed that, in order to avoid operational problems, Germany will not deposit the instrument of ratification until all the necessary preparations for the proper functioning of the system are fully completed, and this does not seem likely to happen until the second half of this year. So the entry into force of the system is foreseen for late 2022 or early 2023 (although further delays cannot be ruled out, if unforeseen events arise that delay the proper implementation of the system).
Who can apply for unitary effect?
As with the European patent application, the unitary effect of the patent can be requested by any patent proprietor (or their corresponding representative); it is not mandatory that the proprietor (or their representative) is a national or resident of a country that is part of the unitary patent system. In other words, for example, even if Spain is not part of the unitary patent, any Spanish patent proprietor can request the unitary effect. In the same way, Spanish European Patent Attorneys can also represent any patent proprietor to request unitary effect, in exactly the same way as a European Patent Attorney from a country that is part of the unitary patent.
How the unitary effect is requested?
The patent with unitary effect is prosecuted in the same way as a classic current European patent, thus following the rules of the European Patent Convention (EPC). In other words, it will be applied for, prosecuted and examined before the European Patent Office (EPO) without any change in the current procedure. In fact, the patent with unitary effect, until grant, is a current European patent application without any difference.
When the European patent application is granted (i.e. when the grant is published), a period of one month is opened for the patent owner (or his representative) to apply for unitary effect of the granted patent before the EPO (preferably using the form created by the EPO for this purpose).
The application for unitary effect must include a translation of the granted patent into English, if the granted patent is in German or French, or into any EU language, if the granted patent is in English (as the patent has been granted according to the EPO rules, the granted patent will be in one of the EPO official languages: English, French or German).
If within the one month period, the unitary effect has been applied for but there is a deficiency in the application (e.g. no translation attached), the EPO will issue a communication giving the applicant an additional period to correct the deficiency. This gives an extra period to make and file the translation which can be very convenient, as the initial period of one month is, in certain circumstances, too tight.
There are a few points to note about this translation:
- The translation will only be compulsory for a transitional period of 6 years (extendable to 12 years) from the entry into force of the system; after this transitional period no translation will have to be provided.
- It is not necessary for the translation to be into a language of a country participating in the unitary patent, but just into a language of the EU. For example, the unitary effect can be requested providing a translation into Spanish, even if Spain is not a participating country in the unitary patent.
To minimize the extra cost of this translation, it is advisable not to choose the language of translation at random, but to take into account certain factors when choosing the language of translation:
- If the patent is to be validated in any EU country (which is outside the unitary patent system) it can be translated into the language of that country and thus that translation can be used for two tasks: to meet the requirements of the unitary effect and to validate the European patent in that country. Thus, for example, if the European patent is to be validated in Spain, it is translated into Spanish and that same translation is used to meet the unitary effect requirements and to validate in Spain, with the consequent savings.
- If the European patent application comes from a priority patent application in one of the EU countries, this priority patent can be used as a translation (only adding those changes that the text has undergone during its prosecution as a European patent). Thus, for example, if the European patent application has a Spanish patent as priority, the text of that patent can be used as the basis for the translation, which would minimize costs.
- If, when unitary effect is to be requested, it is foreseen that there may be litigation for infringement of that patent in a particular EU country (e.g. it has been detected that a competitor may be infringing the patent in that country), it can be translated into the language of that country and that translation can also be used for the (future) litigation.
Finally, it is important to stress that unitary effect can only be requested for those patents for which the grant has been published on or after the entry into force of the unitary patent system.
Are there any transitional measures to take into account when the unitary patent system is about to enter into force?
The European Patent Office will implement two transitional measures (exceptions to the normal procedure) to facilitate the request for unitary effect for those European patents that are granted (or about to be granted) close to the entry into force of the unitary patent system. These measures are 1) the early request for unitary effect and 2) the request for delay of grant.
Both measures can be requested from the date on which Germany deposits the instrument of ratification of the UPC agreement (which will trigger the entry into force of the unitary patent system in 3-4 months) and only for those patents for which the EPO has issued a Notice of Intention to Grant (whereby the applicant is given 4 months to approve the text under which the patent is to be granted, translate the claims and pay the corresponding fees, so that the patent can subsequently be granted and the grant published).
- Early application for unitary effect:
This measure allows the unitary effect to be requested before the unitary patent system comes into force and before the patent grant is published; the EPO will save this request and register the unitary effect automatically when the system comes into force (if the request fulfils all the appropriate requirements) and of course after the patent grant has been published (as this is a prerequisite for the registration of the unitary effect). The EPO will inform the patent owner of the date on which the unitary effect has been registered.
This early request can only be made until the unitary patent system enters into force. After entry into force, the unitary effect can only be requested after publication of the grant, as above.
- Request for delay of grant:
This measure allows the applicant to delay the grant of the patent. Upon receipt of this request (if it meets the necessary requirements), the EPO will delay the grant so that the grant is published after the entry into force of the unitary patent system and therefore unitary effect can be requested for this patent (since if the grant is published before the date of entry into force of the system, unitary effect cannot be requested for the patent).
This request for delay of grant must be made before (or at the same time as) the approval of the text of the patent grant by the patent applicant (such approval is made in response to the communication of Intention to Grant).
Such a request for a delay of grant can only be made until the day of entry into force of the system (after entry into force, the publication of the grant will follow the usual procedure and timetable). In addition, such a request can be combined with an early request for unitary effect; in that case, the publication of the grant will be delayed until the entry into force of the scheme and, once published, the EPO will register the unitary effect automatically.
The unitary patent system will enter into force in the coming months, but there are still many open questions about how it will work, how exactly it can be applied for and what is its convenience.
What are the annuities to be paid for a patent with unitary effect?
For a patent with unitary effect, only a single annuity is paid each year (i.e. there is no need to pay an annuity in each country where the unitary patent is valid). This annuity will be paid to the EPO for the entire life of the patent (as opposed to a classical European patent, where only annuities are paid to the EPO until the patent is granted).
The EPO will keep a percentage of this annuity and the rest will be divided among the states participating in the unitary patent (this is transparent for the applicant who will only have to pay the annuity to the EPO).
These annuities were set in 2015 using the criterion known as TOP 4, which consists of the annuities being the sum of the annuities corresponding to those States where most European patents were validated in 2015 (which were Germany, France, the Netherlands and the United Kingdom). The specific value of these annuities can be found in the following link (it should be noted that before the entry into force there could be a slight change in the value of these annuities to update them to 2022).
Of course, as the annuities correspond to the sum of annuities in four specific countries, the annuities paid in the unitary patent are much lower than if they were paid in all countries where the unitary patent is valid. However, whether the unitary patent is profitable (from an annuity point of view) depends on the number of countries where the patent owner is interested to protect the patented invention. So, generally speaking, (as it depends on the specific countries where the patent owner is interested in protecting), it can be said that if he is interested in less than 5 countries (of those included in the unitary patent), he would pay more in annuities in the unitary patent than validating the classical European patent in the national offices of those countries; and if he is interested in more than 5 countries, he would pay less in annuities with the unitary patent than in the national offices of those countries. So this would be a factor to take into account when choosing whether to opt for the unitary patent or for validation of the classical European patent on a country-by-country basis (of course, there are other factors than annuities to consider).
What are the effects of a patent with unitary effect?
A European patent with unitary effect will have the same effects in all the countries of the unitary system as a national patent in that country (in particular protection against infringement). The only difference is that litigation concerning such a patent will not be settled in national courts but in the Unified Patent Court (UPC).
As indicated above, there will be countries that will not be part of the unitary patent system when it enters into force, but will become part of it later (after depositing and ratifying the corresponding legal instruments). And here a question arises: if the countries that are part of the unitary patent system vary over time, how will we know in which countries a unitary patent has effect? Would it also vary over time?
The answer is no. The countries in which the unitary patent will be valid will always be the same and, in particular, will be those that are part of the unitary patent system on the date when the unitary effect of that patent is registered and will not increase even if some new country joins the unitary patent system later during the life of that patent.
For example, if Ireland joins the unitary system on 25 March 2022, a patent whose unitary effect is registered (after the patent is granted and unitary effect is requested) on or before 24 March 2022 will never have effect in Ireland. If the European patent is to be protected in Ireland, it will have to be validated in Ireland, like a classic European patent until now. To avoid confusion, the list of countries in which a unitary patent has effect will be automatically included when the unitary effect is registered. This way the applicant will know in which countries it has effect and in which it does not (having to validate if he wants protection in those countries where it does not have effect).