Preparing for change

What is a UP?

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 the R-MS.  All 25 EU MS who agreed to enhanced cooperation for unitary patent protection must 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.

Year Unitary Patent (EUR) Equivalent cost of renewal in 25 separate member states (EUR)*
2 35 220
3 105 1452
4 145 1857
5 315 2506
6 475 3250
7 630 3861
8 815 4615
9 990 5554
10 1175 6463
11 1460 7526
12 1775 8655
13 2105 9854
14 2455 11028
15 2830 1219
16 3240 13569
17 3640 14912
18 4055 16166
19 4455 17729
20 4855 19227
Total 35555 160633

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.

How will it come into force?

As the UPC is an entirely new court system, there is significant work involved in ensuring that it is ready to accept cases on day-one.

Preparing for change

The Unified Patent Court (UPC) and a new “unitary patent” or “European patent with unitary effect” (UP) are likely to become a reality in the second half of 2022.

What is the Unified Patent Court?

The UPC is a new common patents court with exclusive jurisdiction in respect of litigation (validity and infringement) for all EP(UPs) and non-exclusive jurisdiction over EPs validated in R-MS.

How do I opt-out of the UPC?

When the UPC comes into force, all existing and future European patents that are granted and validated in R-MS territories will become subject to the jurisdiction of the court.

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