Table of Contents
What is a unitary patent?
The unitary patent does not replace "classic" European patents or national patents. It completes these systems of protection.
A unitary patent is a "European patent with unitary effect", which means a European patent granted by the European Patent Office (EPO) under the rules and procedures of the European Patent Convention (EPC) to which, after grant, a unitary effect is attributed for the territory of the participating Member States at its proprietor's request.
Given its uniform nature, unitary protection is only possible if the European patent meets two conditions: firstly, it must have been granted in all the Member States participating in the enhanced cooperation on unitary patent protection and, secondly, it must be granted with the same set of claims in each of these States. If the conditions for granting unitary effect are met, the EPO registers the unitary effect for the European patent concerned. The patent then provides uniform protection and produces identical effects in all participating Member States. It may only be limited, transferred, revoked or lapse in respect of all the Member States participating in enhanced cooperation. It may be licensed in respect of the whole or part of the territories of the participating Member States.
The unitary patent is managed by the EPO, which is responsible for carrying out various administrative tasks: managing applications for unitary effect, keeping the Register for unitary patent protection, collecting maintenance fees, registering licences of right, publishing translations, managing the compensation scheme for translation costs, etc.
A unitary patent guide is available on the EPO website. The European Patent Office also provides a constantly updated unitary patent protection dashboard, which gives a range of information on the various aspects of the unitary patent.
What is the scope of the granted protection?
A unitary patent only produces unitary effect in the participating Member States in which the Unified Patent Court has exclusive jurisdiction in respect of unitary patents on the date of registration of the unitary effect by the EPO. This means that, although 25 EU Member States are currently participating in the Unitary Patent scheme, Unitary Patents registered at the outset will not cover all 25 of their territories because some of them have not yet ratified the Agreement on a Unified Patent Court (UPCA). The UPCA's status of ratification can be checked on the website of the Council of the European Union.
The territorial coverage of a given unitary patent will remain the same throughout the life of that patent and will not be extended to other Member States that ratify the UPCA after registration of the unitary effect by the EPO. As a result, there will be several "generations" of unitary patents following the evolution of the Agreement's ratifications. The Register for unitary patent protection should therefore be consulted to find out the exact territorial scope of a given unitary patent.
Unitary protection can be combined with the protection conferred by the "classic" European patent: it is thus possible to obtain a unitary patent and also to validate the European patent in the EPC Contracting States whose territory is not covered by the unitary patent system, either because they are not members of the European Union, or because they are Member States of the European Union which do not participate in the enhanced cooperation on unitary patent protection, or because these Member States of the European Union participate in the enhanced cooperation but have not yet ratified or acceded to the UPCA.
What does unitary protection confer?
The unitary patent enables its holder to prohibit, on the territories of the States participating in enhanced cooperation, any act of :
- Direct infringement (Article 25 of the Agreement on a Unified Patent Court):
- patented product:
- making, offering, placing on the market or using a product which is the subject-matter of the patent
- importing or storing this product for these purposes
- patented process:
- using a process which is the subject-matter of the patent
- offering the process for use, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor
- product obtained by a patented process:
- offering, placing on the market or using a product obtained directly by a process which is the subject-matter of the patent
- importing or storing a product obtained directly by a process which is the subject-matter of the patent for these purposes.
- Indirect infringement (Article 26 of the Agreement on a Unified Patent Court):
- supply of means:
- supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.
- However, some acts are not considered to be counterfeiting acts (Article 27 of the Agreement on a Unified Patent Court)
Advantages of unitary protection
The unitary patent offers users a cost-effective option for patent protection. It is an alternative to the European patent without unitary effect (hereinafter referred to as the "classic" European patent), which must be validated and maintained in force individually in each of the countries in which its holder wishes to obtain protection for his/her invention.
The application for unitary effect is free of charge: no filing, examination or registration fees need to be paid to the European Patent Office (EPO).
The benefits of the unitary patent also lie in the simplification of the administrative procedures for obtaining and maintaining protection: the patent holder files a single application to the EPO, which acts as a one-stop shop and centralises the unitary protection and related fee payments. The formalities and associated costs are considerably reduced compared with the current fragmented European patent system, in which different annual fees have to be paid to the national patent offices, which also have different administrative practices.
Simplification also concerns patent information. The Register for unitary patent protection enables users to gather centralised information on the legal situation regarding unitary patents and licences transfers. It thus helps to establish an efficient market for technology transfer in the participating Member States.
Finally, the unitary patent is subject to the exclusive jurisdiction of the Unified Patent Court (UPC), which offers a uniform and specialised framework for patent litigation on a European scale. This is another major simplification. Before the entry into application of the unitary patent reform, national courts had exclusive jurisdiction to rule on patent disputes. It was sometimes necessary to conduct parallel actions in different Member States, and the decisions issued were only valid on the territory of the State in which the court is located. Implementing patent protection can therefore be costly and complex, with the added risk of divergence between decisions issued at national level.
How to obtain a unitary patent ?
The process of applying for a European patent, the examination of the patent application by the EPO, and the EPO grant formalities remain unchanged under the unitary patent regime; the difference arises after grant.
The pre-grant phase is exactly the same as for “classic” European patents: applicants file a European patent application with the EPO to seek the grant of a European patent for some or all of the EPC Contracting States. The EPO examines the application in accordance with the EPC and, if all formal and substantive requirements for patentability are met, grants a European patent.
Once the European patent has been granted, a separate, post-grant procedure can be initiated at the EPO with a view to obtaining a unitary patent. The patent owner must file a “request for unitary effect” within one month of the grant and, during the transitional period, the applicable translation must be filed. European patents will continue to be granted in English, French or German.
Let us underline that the granting of unitary effect requires an action by the European patent proprietor, who must submit a formal request to the EPO in order to obtain the unitary protection conferred. Where there is more than one proprietor, the unitary effect request must be submitted through the common representative referred to in Rule 151 EPC.
In order to be eligible for registration as a unitary patent, the European patent must have been granted with the same set of claims in respect of all the participating Member States (Article 3(1) in conjunction with Recital 7 Regulation (EU) No 1257/2012; Rule 5(2) of the Rules relating to Unitary Patent Protection (UPR)).
Transfers and licences
The unitary patent may only be transferred in respect of all participating Member States. The requirements for transfer contracts are determined by the applicable national law pursuant to Article 7 of Regulation 1257/2012.
A unitary patent may be licensed for all or part of the territories of the participating Member States. Here too, the applicable law is the one determined by application of Article 7 of Regulation 1257/2012.
In addition, the unitary patent proprietor may file a declaration with the EPO stating that he is willing to authorise anyone to use the invention, as a licensee, against payment of appropriate compensation. This "licence of right" is equivalent to a contractual licence.
Cost of a unitary patent
The level of renewal fee is very attractive. The total amount of the fees due for the first ten years ‒ which is the average lifetime of a patent ‒ amount to less than EUR 5,000.
Furthermore, a compensation scheme is available for natural persons, SMEs, non-profit organisations, universities and public research organisations who file a patent application in one of the official languages of the EU other than English, French or German: these entities are entitled to compensation for their translation costs in the form of a lump sum of EUR 500.
A comparison of the costs of a unitary patent with those of a "classic" European patent should take into account not only the level of the renewal fees but also the costs associated with the validation and maintenance of a ”classic“ European patent. The costs associated with the maintenance and the validation of a unitary patent are lower than those associated with a “classic” European patent.
It is to be underlined that:
- Additional fee for belated payment of a renewal fee will be applied which is equal to 50% of the belated renewal fee (Article 2(1), item 2, RFeesUPP)
- A 15% reduction in renewal fee will be applied in cases the proprietor filed a statement with the EPO offering a licence of right (Articles 8(1) and 11(3) Regulation (EU) No 1257/2012, Rule 12(1) UPR, Article 3 RFeesUPP)
Unlike the ”classic” European patent, whose proprietor must pay annual fees in each of the countries in which he/she wishes to keep his patent in force, the unitary patent has a specific annual fees system: the annual fees must be paid to the EPO (not to national patent offices such as IPObel). These fees are due for the years following the year in which the mention of the grant of the European patent to which a unitary effect is conferred is published in the European Patent Bulletin.
More information about the cost of a unitary patent is available on the EPO website.
Translation regime
During a transitional period of six years (which may be extended up to a maximum of 12 years) starting on 1 June 2023, the date on which Regulation 1260/2012 enters into application, the patent proprietor has to file one full translation of the European patent specification, namely:
- into English if the language of the proceedings before the EPO is French or German
- into any other official language of an EU member state if the language of the proceedings is English.
The translation must be filed together with the request for unitary effect. It is for information purposes only and shall have no legal effect. It is published by the EPO.
A translation of the claims into the EPO's other two official languages (than the language of the granting procedure) will already have been filed at the end of the grant procedure. This means that if one of those other two EPO languages is chosen for the translation, only the description will need to be additionally translated when filing the request for unitary effect; the translation of the claims can be re‑used.
If the language of the granting procedure is English and the patent proprietor chooses to file a translation of the specification into an official EU language other than French or German, it will often be possible to revert to an application filed before a national patent office and to adapt it.
After the aforementioned transitional period, no translations will be required when opting for a unitary patent.
Compensation scheme for translation costs
The unitary patent offers small and medium-sized enterprises (SMEs) and certain other entities (natural persons, non-profit organisations, universities and public research organisations) a particular advantage, namely a compensation scheme for translation costs in the form of a lump sum of up to EUR 500.
To be eligible, these entities:
- must have their residence or principal place of business in an EU Member State;
- must have filed the European patent application or Euro-PCT application leading to the unitary patent in an official EU language other than English, French or German.
If there are multiple proprietors, compensation will be granted only if each proprietor fulfils the above-mentioned eligibility criteria.
The request for compensation must be submitted together with the request for unitary effect.
More information can be obtained by following this link (Notes on the request for unitary effect available on the EPO website).
Translations in the event of litigation
In the event of a dispute relating to an alleged infringement of a unitary patent, its proprietor shall provide, at the request and the choice of the defendant, a full translation of the patent into an official language of either the participating Member State in which the alleged infringement took place or the Member State in which the defendant (alleged infringer) is domiciled.
National measures relating to the unitary patent
Safety net procedure
The EPO or the UPC has rejected your request for unitary effect and your European patent has lapsed in Belgium: what should you do?
If the EPO or the UPC rejects your request for unitary effect and you have not paid the first annual fee in Belgium, the Belgian part of your European patent will lapse.
To solve this situation, you can file a request before the Belgian Intellectual Property Office (IPObel) for Safety Net with a view to reopening the deadlines for payment of the annual fees due for the Belgian patent resulting from European protection, within two months of notification of the EPO or UPC decision.
This safety net allows the proprietor of a European patent whose application for unitary effect is rejected to benefit from protection of his invention in Belgium by means of a ”classic“ European patent.
Article XI.83/1 of the Belgian Economic Law Code provides for a three-stage procedure:
- Filing of the Safety Net application and analysis thereof by IPObel.
- Acceptance of the Safety Net request (if the admissibility and formal requirements are met) and opening of a four-month period to pay the fees due in Belgium since the grant of the patent (hereinafter ”fees which would have become due”).
- Payment of the fees which would have become due to the IPObel and IPObel's decision to reopen the time limits.
This decision to reopen the time limits will result in the status of the patent in the Belgian Register being changed to ’Open’. The patent will thus be able to continue its life as the Belgian part of the European patent without unitary effect.
For more information on this procedure, please consult the explanatory note on the Safety Net procedure (PDF, 133.86 KB).
Simultaneous protection
It is not possible to combine European and Belgian patent protection. Under Article 139(3) EPC, any Contracting State of the European Patent Convention may prescribe whether and on what terms an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications or patents.
In Belgium, according to Article XI.86 of the Belgian Economic law Code, no simultaneous protection is allowed between a European patent - with or without unitary effect - and a national patent.
Moreover, simultaneous protection for the same invention between a unitary patent and a national protection stemming from a ”classic“ European patent is not allowed. This exclusion is implemented in Article XI.83, § 5 of the Belgian Economic law Code.
Harmonisation of the rights of the proprietor of a European patent as well as exceptions and limitations to those rights
The scope of the provisions related to patent rights, as well as to exceptions and limitations to these rights, has been harmonised with the provisions of the Agreement on a Unified Patent Court with the same subject matter. These provisions, which are included in the patent chapter of the Belgian Code of Economic Law, have been amended by the Law of 19 December 2017, with effect from 1 June 2023. Patent proprietors now have a uniform framework, whether they opt for unitary protection conferred by a patent, European protection or national protection. The potential infringement of a patent producing its effects in Belgium will therefore be assessed in the same way by the competent judge depending on whether the patent is a Belgian patent, a ”classic“ European patent or a unitary patent.
