In August 2017, the European Patent Office (“EPO”) published a guide which provides an overview on obtaining, maintaining and managing unitary patents (“Guide”).
The Guide explains how the primary aim of the unitary patent system is to combine the centralized pre-grant procedure already in place for European patents with a centralised post-grant procedure in which the EPO acts as a “one-stop-shop” for the administration of unitary patents.
The Guide clarifies that for a unitary patent to be eligible for registration, a European patent must first be granted by the EPO with the same set of claims in respect of all 26 participating Member States.
Once a European patent has been granted, a straightforward procedure is in place for obtaining a unitary patent. A formal request for “unitary effect” must be filed with the EPO within 1 month from the date of the mention of the grant in the EPO’s Patent Bulletin.
Of particular interest is that the Guide clarifies the territorial scope of a unitary patent. Although 26 Member States are currently participating in the unitary patent system, unitary patents registered at the outset will not cover all the 26 Member States, as some Member States have not yet ratified the Agreement on a Unified Patent Court (O.J. C175 of 20/6/2013) (“UPC”) and without ratification of the UPC, the unitary patent cannot take effect in that Member State. Accordingly, the unitary patent will only cover those countries which have ratified the UPC. As at the date of writing, 14 countries have ratified the UPC (including Malta).
The Guide also elaborates that a unitary patent’s maintenance will be far less complex, requiring one single process, under the same legal regime and payment of single renewal fees under the same currency. In this respect, maintenance is expected to become much cheaper with a fee of less than a €5,000 required in order to cover the maintenance fee due for the first 10 years of a unitary patent (which also corresponds to the average lifetime of a patent).
In regard to management of unitary patents, the Guide clarifies that transfers, licenses and other registrable transactions will not require a registration in each Member State. Instead, there will be a centralized repository administered by the EPO.
The timing of the Guide is welcome given that participating Member States are currently working under the assumption that the unitary patent will become operational in the first quarter of 2018. However, it should be noted that the Guide does not constitute an official commentary on the applicable legislation.
You may click here to access the full Guide.