The filing and prosecution of European Patents at the EPO is not changing. On grant, a European Patent (EP) will continue to create the option for validation as a bundle of national rights but a new unitary patent (UP) will also become available via the EPO.

Requesting a UP, will create a single patent with unitary effect across all of the EU Member States that have ratified the UPC Agreement (R-MS). The EPO will examine the request for the UP which must be made within one month of the date of grant.

Based on current ratifications, at launch the initial UP’s coverage will include at least 17 EU MS, including Germany, France, Italy and the Netherlands. For future UPs, if all participating EU MS ratify the UPCA, the UP will cover 24 EU MS. To obtain coverage in other EPC countries, however, patentees will still need to validate nationally in those EPC states.

To be eligible for UP request, the EP application must grant with the same set of claims for all 25 EU MS who agreed to enhanced cooperation for unitary patent protection; they must all also be designated [1]   The request for unitary effect and required translation must be made within one month of grant of the EP.  The one-month deadline is non-extendable. Refusals of a request by the EPO for grant of a UP can be appealed to the UPC.

The UP will cover the territories of R-MS at the date of the registration of the unitary effect of the individual patent. Coverage of a UP will remain fixed throughout its lifetime and will not be extended to EU MS that join the UPC at a later date.

The UP is subject to the exclusive jurisdiction of the UPC and cannot be opted-out.

Renewal fees for a UP will be payable to the EPO in Euros.  The EPO has set the renewal fees to be equivalent to the combined renewal fees that would be payable in the four countries where EPs were most often validated in 2015.  Although the UP will be significantly more cost-effective than a widely-validated classical EP, because the UP is a unitary right, it is not possible to reduce the annual renewal fees by tapering the R-MS territories during the lifetime of the patent.

The chart below shows the relative cumulative costs of an EP patent granted at year 6 (i.e. validation costs + renewal costs at year 6) and then the subsequent renewal costs from year 7 onwards, including official and professional fees. Assuming the patent was granted in year 6, validation and renewal costs become payable on grant. Depending on where the EP patent is validated, the cumulative costs will vary. A UP represents a substantial cost saving over the lifetime of the patent compared to separately validated EPs in 4 or more UP countries, however, it is important to remember that as a unitary right, a UP patent must be renewed as a whole, where as EP patents validated may be renewed, or not, separately.

These figures are shown as a guide for a specification filed in English having 15 claims. If you would like a detailed cost estimate for EP vs UP validation, please contact our UPC ready team – [email protected]

[1] This includes Poland who has not signed the UPC Agreement but who was part of the enhanced cooperation in the creation of the unitary patent protection and thus treated as a participating Member State for the purposes of EU Regulation No. 1257/2012.  On grant, the UP does not and will cover Poland. Future UPs will cover Poland should it decide to sign and ratify the UPC Agreement at a later date.

*Based on national renewal fees as at 1 January 2020.