Unified Patent Court (UPC) – Unitary Patent and validation scope

The Unitary Patent will be available following grant by the EPO and will cover all countries which have ratified the UPC Agreement on the date of grant. This is in contrast to the existing model in which a grant by the EPO leads to a bundle of national patents, but the existing model will still be available both for countries covered by the UPC Agreement (instead of a Unitary Patent) and those not covered by the agreement. Patentees may therefore opt to take a Unitary Patent plus national validations in countries which are not covered.

A Unitary Patent can be elected within 1 month of the EPO grant date by filing a request at the EPO. During a transitional period of 6 years it is also necessary to file a translation into a second language with the request. If the EP application was in French or German a translation into English is required, if the EP application was in English the translation can be into any other official language of an EU member state. The translation is for information only and has no legal effect.

The requirement for a translation could have a significant effect on the cost of a Unitary Patent where a specification is very long. However, since the translation is for information only and the EPO have publicly stated they won’t check it, it is not clear how much patentees will need to spend. The rules do state that the translation should not be carried out by automated means, but the question arises of how much polishing is required to a base machine translation to meet the requirements. Of course, Patentees should be encouraged to file high quality translations, but with no clear way of enforcing that it will be interesting to see what approaches are adopted. A compensation scheme has been implemented for SMEs with their principal place of business in the EU which will pay €500 towards to the cost of the translation for a Unitary Patent.

The key advantage of a Unitary Patent is cost saving compared to conventional validations, but this only applies if a patentee wants protection in a lot of countries. The Unitary Patent renewal fees were set at the sum of the UK, French, German, and Netherlands renewal fees. A simple comparison therefore suggests if you validate in more than those countries you could save money by taking a Unitary Patent (and potentially expand your protection if you did not validate in all Unitary Patent countries). Conversely, if you validate in fewer countries a Unitary Patent would increase costs (but you would expand protection).

However, the comparison is somewhat more complex due to the need for a translation, the initial cost of validating in each country, and the less-than-complete coverage of the Unitary Patent. Initially the Unitary Patent will only cover the 17 countries expected to have ratified the agreement when it enters force and so if other countries are required they must be validated separately. Spain, Poland, and Croatia have not currently signed the UPC agreement so cannot, yet, join and it also cannot cover non-EU countries (UK, Turkey, Norway, and Switzerland).

Any countries not covered by a Unitary Patent could be protected by a conventional bundle of validated patents alongside the Unitary Patent, but that adds to the cost of taking a Unitary Patent. To do a proper comparison the specific countries of interest need to considered and costs calculated.

A key concern about the Unitary Patent is the exposure to a single point of attack due to which a revocation action in the UPC could lead to revocation in all countries. This may push applicants away from the Unitary Patent and towards a conventional bundle of Patents which can be opted out of the UPC (a Unitary Patent cannot be opted out). We will address this point in more detail in the next article on the opt-out provisions.

The ability to cover a large number of countries in a single litigation action at the UPC may make validating in more countries attractive, or be a push towards a Unitary Patent. Whereas previously adding smaller countries wasn’t economically justified due to the low value of any litigation in those countries, they could be added to a claim at the UPC for nearly no extra cost, but would increase a damages award, so may justify expanding protection.

The Unitary Patent provides applicants with a new strategy choice after grant and should be used as a prompt to review and consider your validation strategy.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.