The Unitary Patent

As is the case today with traditional European patents, unitary patents will be administered by the European Patent Office in Munich (the "EPO"). In this connection, the EPO adopted the Rules relating to Unitary Patent Protection on 15 December 2015 (the "UPP Rules").

The European Patent Convention (the "EPC") applies in full to unitary patents, including also the patentability criteria of articles 52-57 of the EPC, and the possibility of central opposition before the EPO, see articles 99-105 of the EPC, so that the patent may be revoked or limited with effect for all EPC states where it applies.

The process of applying for a unitary patent is the same as for European patents today. In other words, the unitary patent begins its life as an ordinary European patent application before the EPO. No later than one month after the European patent has been granted, the applicant must request unitary effect and this will then be recorded in the Register of Unitary Patent Protection. However, the unitary patent is not available for all EPC states, only for the EU member states which participate in the UPC system, as described in more detail below.

Unitary patents may be granted for all countries which participate in the UPC system. Thus, for example, a unitary patent will not be available for Denmark and Germany alone. This is clear from recital 7 of the Unitary Patent Regulation and article 5(2) of the UPP Rules. However, there is one important exception with regard to countries which do not participate in the UPC Agreement.

For the EPC member states which do not participate in the UPC system, the patent may be granted as a traditional European patent but with unitary effect for the countries which participate in the system, see explicitly recital 20 of the preamble to the Unitary Patent Regulation, which implies this possibility.

Read the Unitary Patent Guide adopted by the EPO

Contrary to traditional European patents, renewal fees will be payable to the EPO only. No renewal fees will be payable to the authorities of the member states where patent validation is sought.

The rules and the amount of fees payable for the unitary patent are laid down by the EPO in the Rules relating to Fees for Unitary Patent Protection (the "RFeesUPP").

The amount of the fees is intended to ensure that a unitary patent will be more cost effective than a traditional European patent. A traditional European patent is validated for five countries on average. The renewal fees for a unitary patent are intended to reflect the cost of validating a traditional European patent for the four countries where European patents were most often validated in 2015.

As a novel feature, article 8 of the Unitary Patent Regulation introduces the possibility of allowing the holder of a unitary patent to file a statement with the EPO to the effect that the holder is prepared to allow any person to use the invention as a licensee against appropriate consideration. If such a statement is filed, the patent holder will obtain a 15% discount on the renewal fees, see Rule 3 of the RFeesUPP. The statement must allow anybody to use the invention and no exclusivity may thus be granted. Additionally, patent holders may withdraw such statements at their discretion.

An important aspect on which the unitary patent differs from traditional European patents is that unitary patents do not need to be translated into the official languages of all countries where the patent is to apply. It only needs to be published in English, German, or French and state the patent claims in all three languages.

For a transitional period of no more than 12 years, however, the applicant must submit an English translation of the full patent specification (where the examination language before the EPO is German or French) or a translation into any other official EU language (where the examination language is English).

It is possible to file a patent application with the EPO in languages other than English, German, or French, but in that case the application must be translated into one of those languages.

In this connection, a compensation scheme has been introduced for reimbursement of translation costs (subject to a maximum of EUR 500) if the applicant later decides to apply for unitary effect based on the application.

In case an infringement action is brought, the defendant may require a full translation of the unitary patent into the language of the country where the alleged infringement has occurred or the defendant's home country.

"Unitary effect" means that unitary patents are governed by one set of patent protection rules only. For traditional European patents, Danish patent law applies for patent protection in Denmark, German patent law for patent protection in Germany, and so on.

In many respects, the rules are very similar as European patent law has largely been harmonised by virtue of conventions and EU law, but case law may still vary. In future, however, this difference will also be minimised as most actions concerning both traditional European patents and unitary patents must be brought before the UPC.

However, there will be a transitional period in which traditional European patents may opt out of the UPC system. For those patents, situations may therefore still occur where the patent is revoked in one country, but maintained in another.

Read more about the transitional period and opt-out

For the unitary patent, the same set of rules will always apply, regardless of where patent infringement has occurred. As a general rule, this will be in the participating country where the applicant had its residence or principal place of business on the date when the patent application was filed, see article 7(1) of the Unitary Patent Regulation.

It is therefore important to consider carefully which person or entity should file the application. If the person or entity in question is not located in a participating country, perhaps because the company has its principal place of business in Spain, Norway, or Russia, German law will apply.

For issues relating to patent infringement and revocation, the choice of law will not be very important. For the unitary patent, those issues will almost always have to be determined by the UPC, which will apply the provisions of the UPC Agreement with regard to infringement and the provisions of the EPC with regard to revocation, regardless of which country's law applies to the unitary patent in other respects.

However, with regard to issues relating to the transfer or mortgage of patents, the choice of law may be essential.

Unlike the traditional European patent, the unitary patent may be transferred only in respect of all countries where it applies. The holder is therefore not entitled, for example, to sell the German part and keep the unitary patent for the other countries in question. Conversely, it is possible to license the unitary patent to one or more licensees with effect for individual member states. Similarly, national authorities may grant a compulsory licence to use the unitary patent in a specific country, see explicitly article 3(2) of the Unitary Patent Regulation as well as recitals 7 and 10 of its preamble.

The unitary patent will not replace national patents, European patents or utility models. Those exclusive rights will still be available as an alternative to unitary patent protection. As opposed to traditional European patents and unitary patents, national Danish patents and utility models cover Greenland and the Faroe Islands.

A unitary patent will be available only on the basis of European patents which are granted when the UPC system enters into force or later. Existing European patents which have already been issued cannot be converted into unitary patents.

As, in principle, the unitary patent is simply a European patent which is given unitary effect, the double patenting rules are the same as for traditional European patents.

The issue of double patenting is left to national law with article 139(3) of the EPC. In the same way as an inventor may be granted a European patent as well as a Danish patent on the same invention today, he will, in future, be able to obtain a unitary patent and a Danish patent on the same invention. However, he will not be able to obtain a European patent and a unitary patent on the same invention, see the express prohibition in article 4(22) of the Unitary Patent Regulation and also section 77(5) of the Danish Patents Act.

Traditional European patents and national patents may serve as the basis for the grant of supplementary protection certificates ("SPCs") for medicinal products and plant protection products, see the specific EU regulations (Regulations (EU) Nos 469/2009 and 1610/1996).

SPCs may extend the term of patent protection by up to five years (plus, where relevant, an additional six months for medicinal products concerning children which fulfil certain criteria).

For unitary patents, no EU provisions have been introduced yet which enable the holder to obtain a special "unitary supplementary protection certificate" to apply in all countries where the unitary patent applies. At the time of writing, the EU has launched a process of analysis in order to determine how such a scheme may be designed.

The role of SPCs in the context of the new unitary patent is unclear. In the same way as for European patents, one possibility would be to use the unitary patent as the basic patent underlying national SPCs. By way of example, the same unitary patent could be used for the grant of an SPC from the Danish Patent and Trademark Office which applies in Denmark, and for the grant of an SPC which applies in Germany by the relevant German authorities, and so on. However, the question is still unclear and subject to considerable uncertainty.

By far the most cases concerning unitary patents will have to be submitted to the UPC, which has been granted exclusive competence over the most important issues concerning the unitary patent.

Unitary patents cannot be opted out of the UPC system, and it is therefore now a requirement that unitary patents can only be validated for countries where the UPC Agreement was in effect at the time when the unitary patent was granted, see article 18(2)(2) of the Unitary Patent Regulation. This is the reason why the unitary patent will not be effective in Poland, which does participate in the Unitary Patent Regulation, but has not ratified the UPC Agreement.

Far from all 24 countries are expected to participate in the UPC system from the outset, and the unitary patent will therefore be available from the outset only for some of those countries. As article 18(2)(2) is worded, the unitary patent will be effective only in countries having joined the UPC system at the time of patent grant. Thus, it will not be effective in countries joining later.

This means that the landscape will be somewhat complicated for a lengthy transitional period where unitary patents will be effective in some EU member states, but not in others.