The start of the UPC is almost upon us… or is it? CIPA’s Unitary Patent and Unified Patent Court experts Caelia Bryn-Jacobsen and Leythem Wall join Lee and Gwilym on Two IPs In A Pod to talk all about the upcoming changes, what it means for UK attorneys and how they can continue to be involved with filing in Europe.
The European Patent system has been operating since 1979 and allows you to obtain a patent in up to 38 countries through a single application to the European Patent Office (“EPO”). The procedures for obtaining the grant of a European patent are set out, for instance, in two guides produced by the EPO: “How to get a European patent – Guide for applicants” and “Euro-PCT Guide: PCT procedure at the EPO“.
Although this system can provide significant cost-savings, it is still necessary to validate the grant of the European patent in those of the 38 countries in which the patent owner wants to have protection. This can be quite expensive, depending on the coverage required. As a further way in which to reduce the cost of obtaining patent protection within the EU, a new system, called the Unitary Patent, will come into effect, possibly as early as October 2022. This system could be very advantageous to owners of European patent applications and European patents.
The coming into force of the Unitary Patent system will affect not only applications filed after it comes into effect but also applications which are already filed and European patents which are already granted. It is therefore essential for all owners of European patents or European patent applications to make decisions as to how to make optimal use of the new system.
Along with the Unitary Patent, a new court system will come into effect. This is called the Unified Patent Court (UPC). Unitary Patents will be dealt with by the UPC and existing European patents may be dealt with by this court. A booklet on the UPC is available from CIPA.
The present booklet sets out the basic features of the Unitary Patent system and provides information on the factors which need to be taken into acount in deciding whether you should use system. However, it does not provide a complete guide  to the new system. If you require further information, please contact your patent attorney. If you do not have a patent attorney, please contact CIPA.
The concept of the Unitary Patent was that there should be a single patent covering all the 27 countries in the EU. This has not been fully achieved as, when the system will come into force, only 17  of the EU countries will be covered. However, the most of the commercially-important states of the EU are included. There will be only one renewal fee and this will be payable to the EPO. It will not be possible to divide the Unitary Patent up or drop countries in which it is effective.
In order to obtain a Unitary Patent, the first thing to do is to obtain the grant of a European patent. This will follow the procedures which have been in place for many years and will require the filing of an application at the EPO, directly or via the PCT. The application will be examined in the normal way and, if it meets the requirements for patentability, will be granted by the EPO.
Once the owner of the application receives a notification from the EPO that the application is in order for grant, they will need to decide in which countries protection is required. In most cases , if these countries include any of the 17, they will need to decide whether to cover these countries by the usual method or by applying for a Unitary Patent.
For states that are not covered by the Unitary Patent, like today you will also be able to validate the granted EPO application nationally where desired i.e. a combination of a Unitary Patent and ‘classical’ European patent (covering non Unitary Patent states) is possible from the same EPO patent application.
If they decide to apply for a Unitary Patent, the procedure will be very simple. Within one month of the date of grant, a request must be made to the EPO. This can be done using a simple form provided by the EPO. No fee is required.
The only additional document which will be needed is a translation of the full patent. If the European patent is in German or French, an English translation will be needed. If the European patent is in English, a translation into an EU language will be needed.
Once the request is accepted, the EPO will notify the owner and an entry will be made in the EPO’s Register to show that a Unitary Patent has been granted. The Register will also show the countries in which the Unitary Patent will have effect.
In order to keep the Unitary Patent in force, the owner will need to pay a single annual renewal fee to the EPO. As long as this fee is paid, the Unitary Patent remains in force in all the 17 countries. If you are prepared to grant licences under the Unitary Patent, it is possible to reduce the level of the renewal fees.
Once a Unitary Patent is granted, if there is any litigation, which is quite rare, that litigation will take place before the new Unified Patent Court.
If an owner of an existing European patent application wishes to obtain a Unitary Patent, it will be necessary to delay the grant of the application until the system comes into effect. In certain cases, the EPO will provide a method for delaying the issue of the decision to grant so that a Unitary Patent can be requested. However, in many cases, this method will not apply and, in such circumstances, please consult your patent attorney.
Once the Unitary Patent system comes into force, the default position will be that litigation of all European patents concerning any of the 17 countries will automatically take place before the UPC. If the owner of a European patent does not want to be forced to use the UPC, they can opt the European patent out of the UPC system. There are many factors which should be taken into account in making a decision as to whether to take no action or opt out. These are mentioned in CIPA’s booklet on the UPC. Your patent attorney will be pleased to discuss these factors with you. Unitary Patents cannot be opted of the UPC system.
There are many factors which might affect your decision whether to request a Unitary Patent and whether to opt your existing European patents out of the UPC system. Some of them are discussed below.
It may be that you only do business in a limited number of the 17 countries, in which case the Unitary Patent may not be for you. However, if you wish to have protection in many of or all the 17 countries, then the opposite may be true.
It may be that your commercial strategy involves licensing. The Unitary Patent can be licensed but the fact that is a unitary right and cannot be split up between the countries it covers may make your licensing strategy more complicated. Of course, if you wish to grant a licence for all 17 countries, this may be facilitated by the Unitary Patent.
The UPC is a new court. It is expected to be a good tribunal but it will take time to bed down. You will need to consider whether you are prepared to allow your patent to be litigated before this new court, especially if the patent is a key asset of you business. Of course, if you would not contemplate litigation, then the UPC will not be a factor.
Probably, the main factor will be cost. The cost is dependent on the factors mentioned above.
The cost of obtaining the grant of a European patent will not change.
The cost of requesting the grant of a Unitary Patent will be quite low. The EPO will not require a fee but, if you use a patent attorney, you will need to pay for filing the request. It will be necessary to pay to obtain a full translation of the patent.
If you were to require protection only in a few of the 17 countries, the cost for validating the patent in that limited number of countries may be less than the cost of providing the translation needed for obtaining a Unitary Patent, which may suggest that a Unitary Patent is too costly. However, if you require protection in a larger number of countries, then a Unitary Patent may be more cost-effective.
The cost of paying renewal fees is a significant factor. The level of the renewal fees for the Unitary Patent has been designed so that the renewal fee is the same as the total of the fees you would have to pay for the four biggest of the 17 countries individually. When the system comes into force, the total fees for the first ten years, which is the average lifetime of a European patent, will be less than €5,000.00. So, your costs on renewal fees could be reduced by using the Unitary Patent. You would also save on the cost of organising the payment of up to 17 separate renewal fees. However, if you have a Unitary Patent, you cannot pay the renewal fee for only some of the countries and so you cannot reduce the cost of renewal. If you had a patent in each country, you can decide on a country-by-country basis where to pay renewal fees and so you may be better able to control costs.
There will be cost involved in opting-out an existing European patent. This is explained in our booklet on the UPC. It may be more cost-effective not to opt-out but this will mean that litigation will take place before the UPC. If you are wary of the UPC, the cost of the opt-out may be justified.
There is no simple answer to whether to request a Unitary Patent or to follow your existing procedure at the grant of a European patent. It will depend on your business model and so will need to be carefully thought through for each European patent you obtain. Your patent attorney will be glad to discuss these factors with you so that you can come up with a plan before the system comes into force.
The new Unitary Patent system could be advantageous for your business. Whether it is will depend on your business plan. It is coming soon and so, before it comes into force, you need to be ready to deal with the issues which will arise. If you need help in making your decisions about this new system, please consult your patent attorney or contact CIPA.
 The EPO provides a more extensive booklet, its “Unitary Patent Guide”, which can be obtained via the EPO’s website.
 At present, the countries in which the Unitary Patent will have effect are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and Slovenia. The list is not closed. Other countries can join. Spain, Poland and Croatia are the only countries which at present have indicated that they will not participate in the system.
 There are certain conditions which must be satisfied before a Unitary Patent can be requested. These conditions are usually met for a European patent and your patent attorney will be able to advise you if they are not met for any particular European patent.