The practicality of obtaining a Unitary Patent

We have previously considered the pros and cons of the Unitary Patent system. So, once you’ve decided that a European Unitary Patent gives you the protection you need, what are the requirements for obtaining one? 

Timing

To begin with it is important to remember that the period for requesting a Unitary Patent is only one month from mention of grant of the European patent in the European Patent Bulletin.  This period cannot be extended, although re-establishment of rights can be requested under Rule 22(1) UPR.  From a practical point of view, this is a relatively short period of time, so it is advisable to start considering whether you would like a Unitary Patent much earlier in the examination process.  We would recommend at least thinking about this once you receive the Intention to Grant communication, at which stage you know the scope of the patent that will grant.

Requirements

To be eligible for registration as a Unitary Patent, the European patent must be granted with the same set of claims in respect of all 25 participating member states (irrespective of how many of these 25 states signatories of the UPCA).  This also means that if you want a unitary Patent, you should not withdraw the designation of any of the 25 members states, as this would rule out a Unitary Patent.

A request for unitary patent is filed on EPO Form 7000, which is ideally filed online via the EPO online services, though it is possible to file the request in person or by post.  The request must be signed by or on behalf of the proprietor.  As authorised representatives Mathisen & Macara LLP would be able to sign the request on your behalf.

The request may include an indication of the place of business of the proprietor on the date of filing the European patent.  This information is voluntary, but it can be useful if the proprietor does not have a residence or principle place of business in a participating member state.  If the proprietor did not provide details of a place of business in a participating member state at the time of filing the application for Unitary effect, German law will apply with regard to treatment of the unitary patent as an object of property. 

The request for unitary effect must be accompanied by a translation of the whole European Patent.  If the language of proceedings at the EPO is French or German, the translation must be into English.  If the language of proceedings at the EPO is English, the translation may be in any official language of the European Union.  If the language of proceedings was English and you are also entering the national phase in one of the non-participating member states, such as Spain, the translation prepared for the Spanish national phase can also be used for the unitary patent request.

Examination of the Request

The EPO will examine the request to ensure it meets formal requirements, and either grant or refuse the request.  Assuming they grant the Unitary Patent, they register unitary effect in the Register and inform you of the date of registration.  The Unitary Patent will take effect from the date of publication of the grant of the European patent in the European Patent Bulletin.  If the request does not meet the formal requirements, you will be given the opportunity to amend the request, if appropriate, but if the deficiencies are not remedied in time, the request will be rejected.  The rejection can be appealed at the Unified Patent Court.  In some member states it is possible to validate a European patent after expiry of the deadline for validation if the request for unitary effect is refused or revoked after this deadline has expired.

Renewal

One of the benefits of a Unitary Patent is a single renewal fee, which is paid to the European Patent Office.  Renewal fees for unitary Patents are due on the last day of the month containing the anniversary of the date of filing of the European Patent.  As with all patent renewal fees, the fee increases each year through out the term of the patent, a practice which is intended to encourage parties to abandon patents that are no longer of interest to free up technology for innovation. 

A potential disadvantage is that it is not possible to abandon individual member states as the patent ages.

This blog looks at only the key requirements.  There are additional requirements that are not generally required by all applicants, for example, if you have multiple proprietors.  If you would like advice on what the requirements are for your particular application, please do not hesitate to contact us.