Although the European patent with unitary effect or Unitary Patent was scheduled to enter into force in January 2023, its implementation has been delayed until 1 June 2023.
Nonetheless, to encourage users to make use of the Unitary Patent, as of 1 January 2023 the European Patent Office (EPO) has introduced two transitional measures.
What is a Unitary Patent?
In the current system before the EPO, applicants file a single patent application that, once granted, must be validated before the national patent offices to take effect. Some cases require providing a translation of the patent specification, thereby increasing costs for applicants.
The Unitary Patent provides that, instead of said national validation, a request for a European patent to have unitary effect may be filed. This means that, with a simple procedure before EPO, the patent will have automatic protection in the EU member states that have signed and ratified the Agreement.
Which countries have ratified the Agreement?
So far, the countries that have ratified the Agreement are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
The Agreement is expected to be ratified shortly by the vast majority of the remaining member states: Cyprus, the Czech Republic, Greece, Hungary, Ireland, Poland, Romania and Slovakia.
In total, 25 out of the 27 current EU member states have joined the system.
The two states that are not part of the Unitary Patent system are Spain and Croatia. To obtain protection in these territories, it will be necessary to carry out the existing traditional validation procedure.
What are the advantages for patent applicants?
European patent applicants will save validation and translation costs as compared to the current system.
With a Unitary Patent, applicants will have a single patent with the same registration number in the 25 member states, instead of having 25 patent registrations. This means that, for instance, if a patent assignment or license needs to be recorded, only one procedure will be necessary before the EPO and not 25 procedures before each of the national patent offices.
Similarly, it will not be necessary to pay 25 annuities every year, but there will be only one annuity to pay before the EPO, thus renewing the Unitary Patent in the 25 member states. According to the EPO, maintenance fees are reduced by approximately €5,000 in cases of patents that are renewed for their entire legal life (20 years).
What are the transitional measures provided for by the EPO?
As of 1 January 2023, applicants have two alternatives for patents that are to be granted shortly:
- File an early request for unitary effect before the EPO. This request will be granted as from the implementation date of the Agreement, that is, 1 June 2023.
- File a request for a delay in issuing the decision to grant a European patent before the EPO so that applicants may take advantage of the Unitary Patent system.
Although our country is not part of the Unitary Patent system, this change is important and beneficial to Spanish applicants, who will be able to obtain protection for their European patents in more territories at a reduced cost.
The Ballester IP team remains at your disposal for any doubts or assistance you may need from us in relation to the Unitary Patent.
Lucas Flores – Attorney at law | Spanish Patent and Trademark Attorney
