How to obtain a Unitary Patent?

Fortunately, a Unitary Patent can be obtained easily.

The starting point is the application for a European patent. After the European Patent Office has published the mention of the grant in the European Patent Bulletin, the patentee only has to file a request for unitary effect with the European Patent Office within one month.

The request is free of charge. However, during a transitional period of six years, which may be extended by up to a further six years, the request must be accompanied by a complete translation of the granted European patent. If the European patent is in German or French, it must be translated into English. If, on the other hand, the European patent is in English, it must additionally be translated into a language of another member state.

Regulation (EU) No. 1257/2012, which governs the Unitary Patent and its effects, provides that it will apply from 1 January 2014, or from the date of entry into force of the Agreement on a Unified Patent Court, whichever is later. The UPCA will enter into force on 1 June 2023. The consequence of this would be, in principle, that unitary effect could only be requested for those European patents which enter into force after June 1, 2023.

To catalyze the use of the Unitary Patent System already now, the EPO has adopted two transitional measures for European patent applications for which Applicants have already received the notice of intention to grant. These measures have been available since 1 January 2023, and are as follows:

• Applicants of a European patent already have the possibility to file a request for unitary effect.
• Alternatively, Applicant can request to postpone the decision on the grant of the European patent.

What are the advantages and disadvantages of the Unitary Patent?

The decision to rely on Unitary Patents in the future depends on a variety of considerations.

Unitary patents are particularly advantageous because they provide uniform protection for the entire territory of the participating member states. Patent infringement actions based on the Unitary Patent are thus possible in case of infringement of the patent in one of the participating member states. This is particularly attractive for patentees because patent infringement proceedings before the Unified Patent Court are subject to a tight schedule and a decision in first instance should usually be available after 12 months at the latest.

Furthermore, Unitary Patents are advantageous in terms of costs if one desires far-reaching protection. Only one annual fee has to be paid to the European Patent Office. The amount of this fee is set at approximately the same level as the fees for patents validated in Germany, France, the Netherlands and the United Kingdom.

Furthermore, despite the unitary effect of the Unitary Patent in the participating member states, the patentee remains able to territorially restrict licenses to the patent.

The downside of the far-reaching effect of a Unitary Patent is that a single nullity action may result in the patent being nullified for all participating member states or being maintained only on a limited basis.

Furthermore, unlike the classical European patent, the patentee cannot abandon the Unitary Patent with effect for individual countries.

Likewise, the patentee can only assign the Unitary Patent to third parties with respect to all participating member states.