Should I get a unitary patent?

There are many issues to consider when deciding whether to obtain a unitary patent, explains Kate Hickinson of Appleyard Lees.

The unitary patent (UP) and Unified Patent Court (UPC) could be live from as early as October 2022.

The UP will, for the first time, offer patent proprietors the option to have a single patent covering multiple EU member states (17 at the time of writing, likely to be more in the future). As an alternative, the current “classical” validation route in different states will continue.

Patent proprietors will need to answer the question: should we request a UP based on a granted European patent? 

Some key features of the UP are:

• provides protection in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden (at the time of writing).
• requires payment of a single renewal fee
• must meet new translation requirements
• falls under the jurisdiction of the UPC; and
• requires limitation, transfer, revocation or lapse in all UP member states

Is a Unitary Patent an option?

To file a request for a UP, the EP patent must have the same claims for each UP member state; and have and retain designations for all UP member states (no designations withdrawn).

Requirements and timing of a Unitary Patent request

A request for a UP must be filed within one month of the date of grant of an EP patent.  There will not be an associated official fee.

During a transition period, the patent proprietor will be required to file appropriate translations. For example, if the patent is in English, a translation into any other EU language will be required.

For currently pending EP patent applications where a UP is desired upon grant, there are ways to delay grant in order to keep the option of a UP open.

Should I request a UP?

There are various factors to consider when deciding whether to request a UP and different decisions may be appropriate for different patents in your portfolio. Some indicative questions are:

• would you like wide country coverage? (such as four or more of the member states on offer in the UP)
• would the costs associated with the UP route be lower than proceeding with “classical” validations in the member states of interest?
• are you unlikely to want to ‘prune’ the patent family by reducing UP member states to reduce renewal fees during the life of the patent?
• is it unlikely that you would want to transfer the patent in individual UP member states?
• are you comfortable with any risk associated with jurisdiction under the UPC and the possibility of central revocation of your patent by a third party?

If most of your answers are yes, then requesting UP may be the best option.

For more on this, see an earlier article on the UPC that highlighted the most urgent decision for patent proprietors regarding whether to opt-out existing granted EPs from the jurisdiction of the UPC.

Kate Hickinson is a partner and patent attorney at Appleyard Lees. kate.hickinson@appleyardlees.com

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