(introduced June 2023)

by KATZAROV SA, Patent & Trademark Attorneys, European Patent Attorneys, Geneva, Switzerland

General Information

The EU Regulation No. 1257/2012 provides for a European patent with unitary effect ("Unitary Patent") and the EU Regulation No. 1260/2012 lays down the translation arrangements for Unitary Patents.

The Unitary Patent and Unified Patent Court Protocol came into force on June 1, 2023.

The Unitary Patent is a "European patent with unitary effect”, which shall provide uniform protection and shall have equal effect in all the participating EU member States. At present, there are 17 participating StatesAustria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

Filing and Obtaining a Unitary Patent

The Unitary Patent is based on a European patent granted by the European Patent Office (EPO) according to the European Patent Convention. Thus, in order to obtain the Unitary Patent, it is necessary first to file a European patent application that is processed and examined by the EPO. After the grant of the European patent, it is then necessary to file a request for the unitary effect at the EPO. The request must be filed within 1 month of the date of publication of the mention of the grant in the European Patent Bulletin. The request for unitary effect must be filed by the owner of the European patent or his professional representative before the EPO. If the European patent is granted to multiple owners, for the same or different Contracting member States, a common representative must file the request for the unitary effect (or his professional representative before the EPO).

In addition, to validate the unitary effect, a full translation of the European patent has to be filed with the EPO together with the request for the unitary effect, in English if the European patent is granted in French or German; or into any other official language of an EU member State if the patent is granted in English.

After expiry of a transitional period of 6 years (which may be extended up to a maximum of 12 years), a translation will no longer be required to obtain a Unitary Patent.

Finally, in order to be eligible for registration as a Unitary Patent, the European patent must have been granted with the same set of claims in respect of all the participating member States.

If all of the requirements are met, the EPO will register the unitary effect in the Register for unitary patent protection and issue the corresponding notification. The Register for unitary patent protection is a part of the European Patent Register and provides information on unitary effect, relevant dates, EU member States in which the unitary patent has effect, payment of annuities, information related to any corresponding supplementary protection certificate(s) (SPCs), and other relevant information.

The unitary effect will cover only those participating Contracting member States for which the UPC has entered into force at the date of registration of unitary effect, therefore leading to different generations of Unitary Patents with a different territorial coverage as new countries will join (or leave) in the future.

The main advantages of the Unitary Patent are:

  • No official fee for registering a unitary effect;
  • Single renewal fee for all member States payable to the EPO;
  • Assignment as an all-for-all member States; no assignment allowed for a single member State. License agreement for one or more member States is allowed.

The Unitary Patent provides an additional route to patent protection in Europe, along with national patents and "conventional" European patents.

For members States that are not yet part of the Unitary Patent System or are not part of the EU, a conventional validation of the European patent for each State will still be required.

Unified Patent Court

The Unified Patent Court (UPC) is a common court for settlement of patent disputes, including infringement and revocation actions, actions for damages/compensations for pending European applications and European patents, among others.

The UPC is competent for European patent applications, national validated European patents, European patents with unitary effect and Supplementary Protection Certificates.

The Decisions of the UPC cover the territory of all UPC Contracting member States. Therefore, an invalidation decision or an amendment of the claims of the European patent irrevocably enters into force in all member States. At present, these States are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.

The UPC Protocol offers a possibility to OPT-OUT from the UPC during a 7-year transitional period (extendible by 7 additional years) for national validations of granted European patents and European patent applications anytime as of the publication at the EPO.

However, there are two limitations:

  • Opt-out is not possible for unitary patents; and
  • Opt-out is not possible when proceedings before the UPC have been initiated, inversely if initially opted-out, opting-in is not possible if proceedings before a national court have been initiated.

Please note that opting-out will give exclusive competence to national courts, while in absence of active opting-out, a by default opting-in will apply which will confer parallel competence to national courts AND the Unified Patent Court depending on the country of litigation.

The main advantages of the Unified Patent Court are:

  • Single procedure for enforcing a patent right in 17 countries;
  • Rapid decisions and expected quality of decisions due to the presence of technical judges;
  • Costs.