The Unitary Patent, a concept ushered in nearly a decade ago, appears to be on the cusp of acceptance now that 13 countries have ratified the Unified Patent Court (UPC) agreement. As momentum builds, businesses may be able to take advantage of this new, streamlined option for European patent protection later in 2022 or early 2023.
So what is the Unitary Patent and what do you need to know to prepare for its arrival?
A new, simplified option to protect IP rights
As its name suggests, the Unitary Patent (UP) is designed to protect IP rights across all participating European jurisdictions with a single filing, a single renewal fee and a Unified Patent Court (UPC). Designed to reduce the administrative cost, time and effort of obtaining patent protection across Europe, the UP does not require validations and renewals in individual patent and trademark offices (PTOs) .
The UP is designed to provide uniform protection in all participating Member States (17 participating states to begin with, potentially extending to 25 over the next few years). That means no more national patents based on a European patent are necessary in the participating countries. Note that the UP does not replace existing routes to achieving patent protection in Europe but will serve as an additional option after the grant of a European Patent. Once a European patent is granted, unitary effect can be requested for all participating Member States.
How much will the Unitary Patent cost?
A key feature of the UP is the reduction in costs for validation and renewal. There is no validation fee and just a single annual renewal fee. This represents a significant savings over costs incurred for validations and publication fees paid to the various national patent offices.
The renewal fee level is attractive in the early years, with annual fees for maintaining a Unitary Patent for 10 years—the current average lifetime of a European patent—amounting to less than €5,000 according to early estimates. This corresponds to the combined renewal fees for the four countries where European patents were most often validated in the member states.
One potential disadvantage of the UP is that the costs remain fixed for the full scope of the UP country range, while the national path allows rights holders to abandon specific jurisdictions over time, while retaining jurisdictions which are still of interest.
How will litigation work?
Cases will be heard by a new Unified Patent Court (UPC), an international organization with exclusive jurisdiction regarding European patents with or without unitary effect and supplementary protection certificates (SPCs). The selection process for judges is still underway, but the court is expected to begin operation before the end of 2022.
According to knowledgeable observers, fees for court proceedings will include both fixed fees (ranging from €3,000 to €11,000) and fixed fees + value-based fees (ranging from €0 to €325,000). Recoverable costs will have a value-based (one ceiling for all successful opponents) up to €38,000 to €2m; the ceiling can be lowered or raised by the court. There are additional cost guidelines for infringement and revocation actions and validity cases. Since fee guidelines may change by the time the UPC is in operation, it is important to check with the court for the most accurate and updated information.
Can you opt-out of the Unitary Patent?
Rights holders can apply to opt-out of the UP at any time during a 7-year transitional period (assuming they have no action before the UPC). There will be a “sunrise” period of 3 months prior to the start of UPC to allow processing of opt-out requests before the UPC comes into force. Application to opt-out must be lodged with the Registry of the UPC and will take effect upon entry into the register. Note that no checks to the validity of the request are made and no confirmation will be sent to the applicant/patentee or representative.
There are both pros and cons to opting out that deserve careful consideration. For example, opting out eliminates the potential for a central attack before the UPC and may offer more changes to succeed before different courts in multiple countries. Opting in, on the other hand, may offer significant injunction leverage and monetary leverage of the broad territorial scope of UPC decisions.
There is much more to learn about Unitary Patent and the Unified Patent Court. View our recent webinar, “The Unitary Patent: Preparing for a new method of patent protection in Europe” featuring four prominent European patent practitioners.
We’re ready to support you
Clarivate can help you navigate the new Unitary Patent with an array of expert services. We have solutions to support the selection of a Unitary Patent after grant, combined with traditional validations or the full, traditional validation path. We can provide cost comparisons between traditional validations and those including the UP, and validation and annuity integration to simplify post-grant rights maintenance. Clarivate also offers packages to support the traditional validation process, offering flexibility in portfolio management during the maintenance phase of the patent lifecycle.
Clarivate also offers opt-out support, including data verification of existing patents and formatting and uploading opt-out requests to the UPC register, and translation services to fulfill UP requirements.
No matter what your European patent protection strategy, our team of experienced patent experts are ready to help. Contact them today.