Preparing for change
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. 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.
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 UP is subject to the exclusive jurisdiction of the UPC and cannot be opted-out.
 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.
|Year||Unitary Patent (EUR)||Equivalent cost of renewal in 25 separate member states (EUR)*|
*Based on national renewal fees as at 1 January 2020.
In order to encourage early uptake of the UP, the EPO has announced two options that will allow European patent applicants to either delay grant of a patent application to take advantage of designating a UP or to make an early request for an UP. These options are only available from the date that Germany deposits its ratifications and only where the EPO has despatched its Rule 71(3) communication (the intention to grant letter).
1. Early request for unitary effect
The EPO’s first transitional measure will enable applicants to file early requests for unitary effect, together with the requirements for the registration of unitary effect, at least three months before the start of the UPC. When the UPC comes into force, the EPO will register the UP from the Start Date.
The timing of filing the request will be important because if an early request for unitary effect is filed before Germany deposits its instrument of ratification of the UPCA and/or if a Rule 71(3) communication has not been despatched, it will not be treated as a valid request for unitary effect.
2. Request for a delay in issuing the decisions to grant a European patent
The EPO’s second transitional measure will allow applicants to request a delay in issuing the decision to grant of a European patent after a Rule 71(3) communication is issued and before approving the text intended for grant. The EPO will delay the mention of the grant of the European patent so that it is published in the European Patent Bulletin on or immediately after the UPC Start Date. The patentee then has a one-month deadline to file a request for unitary patent protection, together with the requirements for the registration of unitary effect.
This measure ensures that applicants do not miss the opportunity to obtain a UP but allows them to defer the decision about making the request until after the UPC Start Date.
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