Notably, Spain, Poland and Croatia are not participating in the UPC despite having the opportunity to do so being Member States of the EU. These states may join the agreement later, but for now European patents will need to be validated directly in these states if they are of interest. Of course, the UK will also not participate in the unitary system, having now left the European Union.
HOW WILL THE UNITARY PATENT WORK?
A UP is a single right that covers all participating Member States, and for which only a single annual renewal fee will be payable.
In addition, a single court decision, e.g. on infringement and/or validity, will apply across all participating Member States rather than just in one country.
Patentees will therefore be able to bring a single infringement action for pan-European infringements, while third parties will be able to seek centralised revocation of the Unitary Patent.
Unitary Patents are also subject to revocation via the EPO opposition procedure.
DOES THE UNITARY PATENT REPLACE THE EXISTING SYSTEM?
The introduction of the UP and UPC will not immediately supersede the existing framework for European patents, which will continue to be available from the EPO. Instead, the UP is an alternative patent issued by the EPO for EPC Member States which are part of the EU and have signed and ratified the UPC Agreement.
Patent coverage across all EPC Contracting States can therefore be achieved by a European patent validated in national states (as is currently the case) or by the combination of a UP with a European patent validated in non-UP Member States.
When a European patent application proceeds to grant, applicants will therefore have the following options:
For participating Member States
For non-participating Member States and non-EU states:
It is anticipated that the unitary system will ultimately supersede the present system, but it seems unlikely that this will happen anytime soon. There will at the very least be a seven years transitional period, which may be extended to fourteen years. Further, with several states not part of the unitary system, but included within the current system, there are some major changes and decisions that would be required for this to eventually happen.
HOW CAN A UNITARY PATENT BE OBTAINED?
The EPO is responsible for the procedure to obtain a Unitary Patent. There are two basic requirements that must be fulfilled before a UP designation can be obtained.
Firstly, in order to be eligible for a UP, a European patent must have the same claims in all participating Member States. It is therefore not possible to obtain a UP from a European patent that has different claims in one of the participating Member States, for instance in view of national prior rights that may exist.
Secondly, the European patent must grant with the designation of each of the 24 participating Member States still being valid (i.e. the designation should not have been withdrawn during prosecution).
Providing both requirements are met, the UP designation must be filed at the EPO within one month of the mention of grant of the European patent being published in the European Patent Bulletin.
For a transitional period, there is also a requirement to file a translation of the full specification into English (if the official language is French or German), or alternatively into any other official language of the EU where the official language of the proceedings is English.
Once the UP has been designated, it is then not possible to validate the patent in any of the participating Member States as a national designation.
Providing these requirements are met, it will be possible to obtain a UP from any European patent that proceeds to grant once the UPC is operational. It is however not possible to retroactively convert granted European patents having validated in the participating Member States to a Unitary Patent.