The European Unitary Patent System – 5 things Patent Attorneys need to know now

US patentees have many questions regarding the new Unitary Patent system in Europe. Gwilym Roberts of Kilburn & Strode in the UK offers this brief post on practical issues to and immediate action items. – DC

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There has been a lot of talk about the new Unitary Patent system in Europe. As there are so many unknowns at the moment, it is sometimes difficult to work out what the practical implications now are. This brief post highlights the main points.


The proposed Unitary Patent system has two main components:

Firstly, for patents issued by the EPO, patentees will be able to choose between a) the existing system of multiple national validations from a European Patent, wherein separate renewal fees are paid for each national validation nationally or b) designating the Unitary Patent covering multiple EU countries, wherein a single renewal fee will be payable to the EPO and a single translation required.

Secondly, and separately, a Unified Patent Court will be established, alongside existing national courts, allowing a single action to cover multiple jurisdictions providing wider injunctive and damages type relief than the current fragmented system.

Things you need to understand now

1. The system isn’t here yet. The most optimistic predictions are for early 2015.

2. Any European patent or application (whether or not it designates a “Unitary Patent”) will then be under Unified Patent Court jurisdiction by default. Although details are not known yet, it will however be possible to opt patents back out for at least seven years from entry into force of the new system. This may well be attractive, given that it will then be possible to opt back in. Fees to opt out and to opt back in will be applicable but are not yet known.

There is one key thing that not everyone is understanding: if you designate a Unitary Patent then you are tying yourself into the Unified Patent Court system, but possibly making a saving on translation and renewals. However, the Court will have jurisdiction over both types of patents that are issued by the EPO. Even if you do not designate a Unitary Patent, the Unified Patent Court will still apply to your patent unless you opt out.

Action now: Monitor for further details of the opt out process and consider opting -out.

3. As the Unified Patent Court system will apply to all European patents and applications, whether or not a Unitary Patent has been designated, then there is an opportunity to target competitor patents in Europe for multi jurisdiction revocation in a single action, even if the 9 month post grant opposition period has expired. However, you will need to do this before the patentee opts out and there may therefore be a race on day one.

Action now: Monitor updates on how opt out timing will work, if you see revocation opportunities.

4. A lot of the uncertainty arises because we don’t know how good the Unified Patent Court itself will be. But given that the judges are likely to be the same people who are already operating in Europe – and some of these judges are fantastic – let’s assume that the courts are going to work. That makes the question much simpler – do I want to enforce a patent in multiple jurisdictions in a single action, balanced against the risk of central revocation?

Action now: Start thinking about the tactical pros and cons of multi jurisdiction enforcement and revocation – assume the courts will be good!

5. If you like the idea of the Unified Patent Court and wish to obtain coverage for multiple EU countries, then the Unitary Patent designation may be attractive to you. You cannot request it now, but it will be available for European patents that are granted after the new system enters into force. Given the backlog in prosecution at the EPO at the moment, you may well have applications which are pending now which could grant after the new system comes into force.

Action now: Consider whether it is worth delaying any key patent applications, if you definitely want Unitary Patent protection.


There has been nothing here about costs, languages, translations, procedure etc. – these are important details, but shouldn’t affect your basic decisions. There is not a lot to do now; consider delaying, keep watching and start thinking.

18 thoughts on “The European Unitary Patent System – 5 things Patent Attorneys need to know now

  1. 18

    The European Union patent is a proposed patent legislation in the European Union, which would allow individuals and companies to obtain a unitary patent throughout the European Union, with the exception of Spain and Italy.

  2. 15

    Five more points

    Consequential amendment to national patent laws
    Article 64 EPC requires member states to give the same rights to a European patent as would be given by a national patent. It does not on a plain text reading give member states the right to give European patents more rights than a national patent.
    The law on indirect infringement of a patent litigated through the UPC (a bundle patent or a unitary patent) extends to sale in one country of an integer intended to put the invention into effect in another country to which the patent extends. Most national patent laws are national in extent and indirect infringement is assessed on a national basis such that supply of an essential integer in one country to put the invention into effect in another country would not (normally) infringe.
    It appears that some pretty significant amendments to the law of infringement of national patents may be require to put the Unified Patent Court/Unitary Patent [UPCUP] into effect.

    Renewal fees
    On conventional European “bundle” patents it is possible to drop designations during the lifetime of the patent to save renewal fee expenditure. With the unitary patent its will not be possible – you keep or drop it for all countries. As the renewal fees may turn out very expensive link to this could be a problem.

    Turkey is not [yet] part of the EU. One day perhaps when islamaphobia subsides…

    Unitary nature
    If countries join the system piecemeal then there could be the result that over time different “unitary” patents will cover different countries with different renewal fees. Also, Croatia looks set to join the EU on 1st July 2013. If it does so and also signs up for the unitary patent, then on a plain text reading of the regulation [unsullied by judicial interpretation], no unitary patent can be granted for any application filed earlier than 1st January 2008 which is when Croatia joined the EPC. Let us hope that they [and other late joiners such as Malta] have the grace to hold back a little to let all who want to sup of the poison UPCUP.

    Earlier national rights
    Suppose you have a granted European patent, and it turns out there was an earlier filed later published Estonian utility model for exactly the same invention that was never found in the European search and has only now come to your attention. With a “bundle” European patent you say “c’est la guerre” [very European] and simply drop Estonia and keep all other countries. With the unitary patent you will lose the whole lot and might say “merde” or something a lot stronger. By the way, Belgium does not yet have mandatory 18 month publication….

  3. 14

    I would add a 6th point to the list presented in the post:

    6. Despite the name, it is far from being clear how “unitary” the patent will end up being. From a legal point of view, the unitary patent is a monstrousity born from the interplay between two EU Regulations adopted in the regime of “enhanced cooperation”, a couple of Articles in the EPC that so far only Lichtenstein and Switzerland have made use of, and a separate international Treaty (the Unitary Patent Court – UPC in short – agreement).

    End result: the new unitary patent will apply ONLY to those States,
    -which are Contracting States of the EPC (38 at the moment)
    -and EU members (27)
    -that have joined the “enhanced cooperation procedure” (25, Italy and Spain are out)
    -and that have signed and ratified the UPC agreement (no ratification has gone through at the moment; Poland even refused to sign the UPC agreement, so for now it will be at most 24 States to benefit from the unitary patent).

    It is also to be noted that the first “unitary patents” will be issued as soon as 13 States (among which there must be United Kingdom, France and Germany) ratify the UPC agreement. If some States are slow in the ratification procedure or decide to bail out, the actual territorial scope of unitary patents might be not be so wide after all.

  4. 13

    link to

    MM, as you see, the EPO has finished its public consultation, whether to scrap Rule 36.

    Shame. If you had known earlier, you could have given the EPO your views.

    The UK Institute of Patent Attorneys, for one, will have told the EPO in no uncertain terms what it thinks of their disgraceful Rule 36. We wait and see what transpires now.

  5. 12

    Anonymous, I confirm that others have made exactly your point.

    I see a ratchet effect here. No Patent Office will agree to any arrangement that reduces its annuity income. The Commission in Brussels is pushing for annuities fees low enough to render the unitary patent an attractive choice but I see it lacking the clout to drive that through.

    So in the end the unitary patent might be affordable only for Big Pharma. If you are, say, Toyota Motor, why bother with anything more in Europe than a national patent in Germany? So, does the unitary patent further the objective of a “single market” in the EU? I think not. Instead, it is going to drive innovators back towards national patents.

  6. 11

    Ken, are you thinking Turkey? That’s the only one I know. I guess you could get a favourable pan-European decision on infringement and validity, but then struggle to convince a judge in Turkey to enjoin the infringer in Turkey.

  7. 10

    What about the advantage of alleviating the “use” requirement? Some European countries require that you use the patent in their country in order to enforce it. But presumably the “unitary” patent would only require such use to occur anywhere in the EU.

  8. 8

    LOL – have you ever seen Malcolm move so fast? It’s like he dare not be contaminated with anything that might harm his agendas.

  9. 6

    Given the known benefits and drawbacks of electing unitary patent, I anticipate that the popularity of the unitary patent will depend primarily on the annuity payment schedule, which has not yet been decided.

    For example, if the annuity payment schedule is equivalent to 2x current European country average, I would expect unitary patents to be popular. However, if the annuity payment schedule is equivalent to 10x current European country average, I would expect unitary patents to be unpopular.

  10. 5

    Enough time has passed now for every major EP application filer to have experienced the joys of Rule 36, a deadline for filing any and all divisional applications that will ever be filed off a given original EP patent application.

    Question for EPO watchers:

    (1) To date, what is the maximum number of Rule 36 divs that has been filed off a single application?

    (2) Has Rule 36 discernably affected the number of divs that are filed? Any numbers on how many such divs are prosecuted to grant (or is it too early to tell)?

  11. 3

    I doubt it. The national courts will retain jurisdiction over national patents of which there are still plenty even though the European Patent Convention has been in force for many years. There are, after all, many national trade marks and design registrations even though Community trade marks have been available since 1996 and registered Community designs since 2002. It also has to be remembered that there is a big question mark over British membership of the EU and indeed the survival of the EU given the Eurosceptic mood of the citizens of many member states.

  12. 2

    Great article – thanks

    Will the unitary court have jurisdiction over any EPs granted before the new system comes into force? It seems to me that the national courts will likely wither and lose effectiveness once this change happens.

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