On 1 June 2023, significant changes in the European patent system will enter into force. On the one hand, patent owners will be able to obtain a Unitary Patent, a single European patent for most EU member states. On the other hand, the Unified Patent Court will be established to handle patent litigation on a European level. This article focuses on the Unitary Patent.
The centralized procedure for obtaining a European patent at the European Patent Office (EPO) stays the same, but upon grant the patent owner can keep the patent as a "unit" instead of the classic way of national validation into a bundle of national patents – hence the commonly used term “bundle patent”. The classic patent system involved national validation requirements and/or translation costs in many European states and furthermore payment of renewal fees in each individual state to keep the granted patent in force. With the new system, patentees will be able to select, upon grant of the European patent, for the so-called “unitary effect” and keep the patent as a unit for all the participating EU member states. The official title will be a “European Patent with Unitary Effect”, but commonly the term “Unitary Patent” is used (abbreviated UP).
The request for the Unitary Patent must be filed within one month after the grant of the European Patent. With the request, only a single translation of the specification needs to be provided and this translation may be a computer translation as it is for information purposes only and has no legal value. Furthermore, a single renewal fee payment (paid to the EPO) will be sufficient to keep the patent in force in all the participating EU member states. The level of the renewal fees will be about the same as the sum of the post-grant renewal fees that would be payable for the four most important countries.
So for any European patent that would otherwise be validated and kept in force in four or more of the participating EU member states, the UP will be more cost efficient. The classical bundle patent system remains an option as well, so patentees can make strategic choices upon grant of their European patents to maximize protection while staying cost-efficient.
So which states will the UP cover? One would expect a simple answer: the whole of the EU, but alas it is not that simple.
Today, the EPO grants patents that can be validated in the 39 member states of the European Patent Convention (which includes the 27 EU member states) plus 1 extension state and 4 validation states. Among the EU member states, 25 have chosen to participate in the “enhanced cooperation” to establish the new Unitary Patent system. Among these 25, there are currently 17 states that have completed the ratification process.
So as it stands, the following states will be covered by the UP: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden.
The most important exceptions are:
For these countries the classic European patent system remains in place with validation and national renewal fees after grant.
The table below compares the renewal fees payable for maintaining a Unitary Patent with those payable for maintaining a European patent in some key member states which are participating in the Unitary Patent system. The costs mentioned include the official fee and a service cost of € 100 per renewal fee.
The table shows that the renewal cost for a UP over 20 years is about € 15k less than that of a classical EP patent validated in the five mentioned states.
For the sake of clarity, there are no changes in the granting procedure at the EPO. The choice to go for a Unitary Patent (UP) or bundle patent (EP) only comes into play when the European patent is granted.
The first strategic question to consider is the importance of the patent for your business. Maybe you want to be able to litigate the patent at the UPC, for a large territory in one court case. Or maybe you want to avoid litigation at the UPC. Please read our separate article on the UPC for more information.
However, because only a small percentage of granted patents becomes the subject of a patent litigation, cost will usually be the main concern. A few examples:
In this case, the classical EP patent is more cost-efficient. For the UK, renewal fees need to be paid separately anyway as it is no longer an EU member state. And the renewal cost for France and Germany will be lower than the renewal cost of the UP.
Our recommendation: use the classical system and validate your EP patent in France, Germany and the UK.
In such cases, the choice between UP and EP depends on the states because the validation requirements and renewal fees are different in each country. An advantage of choosing for the UP is that also the administrative burden is reduced (monitoring one deadline and payment vs. multiple). An advantage of choosing for EP is that this offers some flexibility to for example reduce the renewal cost as the patent ages by dropping one or more countries.
Our recommendation: choose UP if you want to reduce the administrative burden; choose EP if you want to reduce the renewal cost as the patent ages.
In this case, the UP is definitely more cost-efficient, with significant savings on renewal fees. Furthermore, the administrative burden is significantly reduced (monitoring one deadline and payment vs. multiple).
Our recommendation: choose UP
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